If you are able to possibly require a patent, you should obtain some information before you register. The first two bullet points are objects for which you want to get to know each other better.
USPTO = United States Patent and Trademark Office. Applicants who qualify for a small unit status can reduce many USPTO fees by 50 percent.
America Invents Act (AIA)
Qualification as a micro or small business before the USPTO
In 2011, the America Invents Act (AIA) created the new category of microenterprises that can cut certain fees by 75 percent. An applicant who is neither a small business nor a micro-enterprise is considered a large company and has to pay standard fees.
A small entity is an entity that:
is a nonprofit organization;
does not, together with all affiliates, have 500 or more employees;
And has not transferred, licensed or otherwise transferred any interest in the invention to a non-small entity.
The USPTO has defined four categories of concerns that are considered "small businesses".
a non-profit organization,
a single inventor,
or a small business.
The definitions for "university", "non-profit organization" and "individual inventor" are defined in the patent regulations.
A wholly owned subsidiary of a not-for-profit organization or university is considered part of the charitable organization or university and may claim the status of a small organization.
The term "small business owner" is not defined in the patent regulations.
The Small Business Administration (SBA) has sole responsibility for identifying "small businesses" and the USPTO does not accept sizing requests.
The SBA has defined "small business" as a "business including its affiliates" that:
is independently owned and operated;
does not dominate in the area in which it deals with government contracts;
and meets all applicable criteria for a particular industry in terms of number of employees (typically less than 500) or annual revenues (typically less than $ 7 million) or annual profit (typically more than $ 2 million) USD).
The SBA Sizing Panel (SBA) has broadly interpreted the term "affiliate" to cover virtually any situation where an otherwise small business might interact with a large business enterprise.
The SBA considers factors such as ownership, management, past relationships with or another entity, and contractual relationships worldwide to determine whether "affiliation" exists to determine sizing.
However, the key factor is the control. Entities are considered affiliates if one party controls or controls the other, or a third party controls or controls both.
Relative control of the company, rather than the actual percentage of investment or ownership in the business, is important in determining the size of the SBA company.
In the size complaint of Novalar Pharmaceuticals, Inc., SBA No. SIZ-4977 (2008), the SBA Sizing Panel decided that a "liaison" with a single minority shareholder (a venture capital firm) would transform the otherwise small-scale medical firm's start-up Company into a large corporate group because the venture capital firm had the potential to block certain acts of the board that constitute a negative control of the company.
Similarly, the Size Appeal of TPG Consulting, LLC, SBA No. SIZ-5306 (2011) found that a small web design company was a big business interest because the business was economically large Production company was dependent on a customer.
Customers must be aware that their business may not be able to qualify for the status of a small unit if their contractual relationships or relationships link them to a large business entity.
Even if a single factor does not depend on "affiliation," the SBA will consider all evidence under a "set of circumstances" rule.
The consequences of a mislabeled entity status can be severe. In cases where the courts have determined that the applicants paid the fee for a small entity without a good faith view as a small entity, the courts have determined that the patent in question is invalid.
Fortunately, the status of the entity can be easily corrected by paying the increased fee amounts and by providing appropriate certificates of lack of fraudulent intent.
Micro unit: There are two ways to qualify as a micro unit.
The first way to qualify as a micro-enterprise is under point (a) of the new provision, which provides for the following conditions for each applicant, inventor and co-inventor which:
has not been designated as the inventor in more than four previous patent applications (provisional applications, patent applications filed in a foreign country, such as the International Registration System (PCT)) for which the US basic fee has not been paid;
and any claim that a party has assigned as a result of previous employment or is required to assign it does not count).
has a gross income of less than three times the average household income in the US for the previous calendar year (for 2013 = $ 150,162 or 3X $ 50,054, the median household income in 2012).
For parties not paid in US dollars, the average exchange rate of the previous calendar year applies;
has not assigned, licensed, or otherwise granted any interest in the invention to a business whose gross income exceeds the amount stated above (unless the business is related to a university);
and also meets the requirement for the status of a small unit.
The second way under letter d of the new rule:
is through a relationship with a US college.
The employer of the applicant from whom the applicant obtains the majority of the applicant's income must be a university.
Or the application must be ceded, granted, transferred or contractually or legally obliged to transfer, grant or transfer a license portion of the application in question to the institution.
Applicants at the university earning a large part of their income from the university, or applicants who have submitted or are required to attend a university:
can claim the status of a micro-enterprise regardless of income.
Although perceived as a major gap in the statute, because an otherwise ineligible institution can become a "minority" by nominally licensing or transferring its patents to a university:
The USPTO has argued that there is no gap, since the status of a small unit must first be determined in order to claim the status of a micro unit.
In order to obtain the status of micro-enterprise referred to in point (d), the actual inventors and not the higher education institution must be designated as the applicant.
Since the definition of "college" refers to the Higher Education Act of 1965, the college referred to in paragraph (d) must refer to the United States.
For micro-enterprise status, this is the only difference between US and non-US companies.
The process for requesting the status of microenterprises includes the following requirements:
Certification of the status of a microenterprise that can be signed by a patent attorney, the assignee or all applicants must be submitted before or against payment of fees for the micro-enterprise set. In other words, if no micro-enterprise status is accidentally sought, the difference in fees will not be reimbursed.
If the status of a micro-enterprise is no longer adequate, notification of the loss of the claim must be submitted. It is not enough to pay the fee at a different price.
The certification must be submitted only once in each application.
Other procedural requirements are as follows:
Any related application, including any continuous application, partial application, continuing or reissuing, must have its own certification.
If the status of micro-enterprises is determined in good faith, but erroneously, the error will be excused upon payment of the fee and certain other formalities.
Because the applicable Rule states "will" rather than "may", remedies will be by law and not at the discretion of the USPTO once the requirements are met.
The remedy does not apply to fraudulent attempts to establish the status of micro-enterprises.
Great entity: any entity that is neither a small nor a small entity.
Lawyer for technology
Feras Mousilli is founding partner of Lloyd & Mousilli (www.lloydmousilli.com) and advises clients in matters of technology law. He specializes in advising start-ups through Fortune 100 companies on intellectual property. He served as senior corporate counsel for Apple & Dell and as a patent attorney with the DLA Piper law firm.
Mr. Mousilli served as President Elect for the Austin Association of Corporate Counsel and as a visiting lecturer at the University of Texas and the UC Berkeley Schools of Law. He is the proud recipient of the Covington Pro Bono Award and has been honored by Texas Monthly as Texas Rising Star in Super Lawyers.
Feras holds a bachelor's degree in biomedical engineering and computer science and a masters degree in computer science from Johns Hopkins University. He received his Juris Doctor from the School of Law of the University of Texas.