The short answer is that a company or individual who already is qualified as a small entity (which entitles you to 50% off U.S. patent filing costs) may also qualify under the final rules issued by the Patent Office for micro-entity status (entitling you to 75% off U.S. patent filing costs) when (a) that entity has filed no more than 4 prior non-provisional U.S. patent applications, (b) that entity has not had an income in the last year greater than $150,162 (this number changes based on median U.S. household income), and (c) the invention in question has not been licensed to a non-micro-entity.
The limit of no more than 4 prior non-provisional U.S. patent applications means that an emerging company or nanotech start-up will only be able to take advantage of micro-entity status for a limited time period when it begins to file patent applications. However, small entity status may be available for a much longer period of time, depending on the company’s rate of growth and whether it has licensed applications to a large entity.
Additional strategies have recently become available that can help reduce patent costs. One such procedure is the Patent Prosecution Highway program (leveraging allowance in one country’s patent office to obtain review of a corresponding set of patent claims in a second country), the After Final Consideration Pilot Program (for obtaining compact prosecution without the need to file a continuation), the First Action Interview Pilot Program (to meet with a patent examiner before receiving a first action on the merits to try to advance prosecution), and the Pre-Appeal Brief Conference Request (to obtain review by additional examiners to try to avoid the costs and time required for appeal).
While harnessing the U.S. Patent Office’s compact prosecution programs may reduce costs, it is important to consider pros and cons of the various programs in relation to overall business objectives of the company. While it may seem like a given that any applicant would benefit from faster and cheaper patents, that is not always the case. For nanomedicine patents, where it may take many years to obtain FDA approval to market a product, having a patent faster may not always be an advantage. In fact, compact prosecution may lead to a shorter patent term due to reduction of Patent Term Adjustments (extensions of a patent term based on delays in examination) that might otherwise accrue. For a pharmaceutical product, longer patent life may be a consideration that trumps the benefit of obtaining a patent sooner and for lower cost.