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montysimmons
montysimmons, Patent Prosecutor
Category: Intellectual Property Law
Satisfied Customers: 244
Experience:  Electrical Engineer, South Carolina Attorney, Member of US Patent Bar
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I already paid patent fees for examination and search,

Resolved Question:

I already paid patent fees for 'examination' and 'search', non-small-entity & non-micro-entity.
Can I switch to small-entity at this point?
Briefly what are the main disadvantages to be a small-entity?
I assume the patent can still be used for commercial purpose event if it is granted to a small-entity.
Submitted: 1 year ago.
Category: Intellectual Property Law
Expert:  replied 1 year ago.

montysimmons :

Hello, you there

Customer:

Hello, I am

montysimmons :

There are no disadvantages to claiming small-entity or micro entity

montysimmons :

you just get a price break

Customer:

so why one would use non-small-entity application?

montysimmons :

one has to quality for small entity

montysimmons :

the purpose is to give small entity a price break

montysimmons :

Under 35 U.S.C. 41(h)(1), fees charged under 35 U.S.C. 41(a) * > , < (b) > and (d)(1) < shall be reduced by 50 percent with respect to their application to any small business concern as defined under section 3 of the Small Business Act, and to any independent inventor or nonprofit organization as defined in regulations issued by the Director.

Customer:

I'm pretty sure I do qualify. I did not apply though because somebody told me that if I have the process of evaluating the patent for small-entity is more aggressive, or not allowed to do amedments

montysimmons :

That is not true.

montysimmons :

  • (b) Any request for refund must be filed within two years from the date the fee was paid, except as otherwise provided in this paragraph or in § 1.28(a). If the Office charges a deposit account by an amount other than an amount specifically indicated in an authorization (§ 1.25(b)), any request for refund based upon such charge must be filed within two years from the date of the deposit account statement indicating such charge, and include a copy of that deposit account statement. The time periods set forth in this paragraph are not extendable.

Customer:

how about getting a patent granted as micro-entity. Do I loose any rights?

montysimmons :

no

Customer:

...rights for using the patent .

montysimmons :

the price breaks are just there to help those the government believes to have less funding

montysimmons :

micro entity is for the individual inventor

montysimmons :

small entity is for a small business

montysimmons :

regular price is for big corporations

montysimmons :

rights are the same for all

Customer:

so I can still switch to at this point even though I paid in full so far?

montysimmons :

yes

Customer:

I assume I will not get back any credit from I paid so far, to be used against the next fees.

montysimmons :

I am not 100% sure about back fees

montysimmons :

one can get refunds on fees as long as it has not been 2 years

montysimmons :

since you paid the fees

montysimmons :

it is worth a try

montysimmons :

I have never had to request a refund

montysimmons :

but I can review the requirements if you wish

montysimmons :

give me a minute or two, let me check

montysimmons :

http://www.uspto.gov/web/offices/pac/mpep/s509.html

montysimmons :

check out the information at the link above

montysimmons :

Let me keep reading and I will give you more info

montysimmons :

  • a) The Director may refund any fee paid by mistake or in excess of that required. A change of purpose after the payment of a fee, such as when a party desires to withdraw a patent filing for which the fee was paid, including an application, an appeal, or a request for an oral hearing, will not entitle a party to a refund of such fee. The Office will not refund amounts of twenty-five dollars or less unless a refund is specifically requested, and will not notify the payor of such amounts. If a party paying a fee or requesting a refund does not provide the banking information necessary for making refunds by electronic funds transfer (31 U.S.C. 3332 and 31 CFR part 208), or instruct the Office that refunds are to be credited to a deposit account, the Director may require such information, or use the banking information on the payment instrument to make a refund. Any refund of a fee paid by credit card will be by a credit to the credit card account to which the fee was charged.

montysimmons :

arguably, you paid the non-discounted price by mistake

montysimmons :

you did not have a "change of purpose" you just did not know

montysimmons :

so I submit you will be able to get a refund as long as the time since paying the fees is not more than 2 eyars

montysimmons :

years

Customer:

could this request cancel my application? I want to keep the process going.

montysimmons :

no, no chance in that happening

montysimmons :

the only way your application is lost is if it goes abandonded

montysimmons :

and there is almost always a process to revive an abandoned application

montysimmons :

just cost lots of money

montysimmons :

one can cure just about any problem with the USPTO patent process if one has plenty of money

montysimmons :

to pay their fees

Customer:

so first I will try to switch to small or micro entity, and after that I'll try to negotiate getting back some credit from what I paid so far, to be used for future fees.

montysimmons :

I would switch to micro entity

montysimmons :

http://www.uspto.gov/forms/sb0015a.pdf

montysimmons :

link to the form

montysimmons :

states the requirements on the form

Customer:

I will review the conditions and I will apply. Thank you this answers my question.

montysimmons :

you are welcome

montysimmons :

you can always call the USPTO and they are very helpful

montysimmons :

if you have any question about the process as you go through come back and I will be glad to help

montysimmons :

when you get rejections I can give you some sample responses

Customer:

I'm pretty sure I will be more questions.

montysimmons :

come back anytime

montysimmons :

I have made about every mistake one can make

montysimmons :

so I know the solutions

Customer:

your help is greatly appreciated.

montysimmons :

you are welcome

Customer:

have a good day.

montysimmons :

you too, look forward to your next question

montysimmons :

I will end chat now unless you have something else

montysimmons, Patent Prosecutor
Satisfied Customers: 244
Experience: Electrical Engineer, South Carolina Attorney, Member of US Patent Bar
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montysimmons
montysimmons
Owner Simmons Patents
244 Satisfied Customers
Electrical Engineer, South Carolina Attorney, Member of US Patent Bar