STRONG Patents Act Would Fix Micro Entity Gap

05 March 2015 PharmaPatents Blog

Senator Coons (D-Del) has introduced patent reform legislation that is similar to but different from the Goodlatte Innovation Act pending in the House. One section of S. 632 that does not have a parallel in H.R. 9 relates to micro entity status, and would fix the problem with 35 USC § 123 that left universities out of the definition of micro entities.

Micro Entity Status

The America Invents Act (AIA) created a new class of applicants–micro entities–who can pay certain patent fees at a 75% reduced rate. The new statute, 35 USC § 123, created three independent ways to qualify for micro entity status:

  • (i) based on the income of each applicant
  • (ii) based on each applicant’s employer being an “institution of higher education” and
  • (iii) based on each applicant having assigned or licensed the application to an “institution of higher education” (or being obligated to do so)

Notably, the statute as created by the AIA does not provide for micro entity status where the “institution of higher education” itself is named as the applicant. Thus, in order to take advantage of micro entity status, universities have to file their patent applications naming the inventors or (possibly) a university technology transfer entity as the applicant(s).

The Support Technology & Research for Our Nation’s Growth Patents Act of 2015

Section 110 of Senator Coons’ bill, the STRONG Patents Act, would fix the gap in the micro entity statute by revising § 123(d) to include institutions of higher education and certain university technology transfer entities in the list of applicants who can qualify for small entity status:

(d) INSTITUTIONS OF HIGHER EDUCATION.—For purposes of this section, a micro entity shall include an applicant who certifies that—
*****
(3) the applicant is an institution of higher education as defined in section 101(a) of the Higher Education Act of 1965 (20 U.S.C. 1001(a)); or
(4) the applicant is an organization described in section 501(c)(3) of the Internal Revenue Code of 1986 and exempt from taxation under section 501(a) of such Code that holds title to patents and patent applications on behalf of such an institution of higher education for the purpose of facilitating commercialization of the technologies of the patents and patent applications.

The Future Of Patent Reform?

It is hard to know whether the introduction of the STRONG Patents Act is a sign of strong momentum for patent reform, or reveals competing goals that may slow the patent reform process while differences are resolved and compromises are negotiated. Thus, even though fixing the micro entity gap should be non-controversial, it could be some time before universities can fully benefit from the micro entity statute.

This blog is made available by Foley & Lardner LLP (“Foley” or “the Firm”) for informational purposes only. It is not meant to convey the Firm’s legal position on behalf of any client, nor is it intended to convey specific legal advice. Any opinions expressed in this article do not necessarily reflect the views of Foley & Lardner LLP, its partners, or its clients. Accordingly, do not act upon this information without seeking counsel from a licensed attorney. This blog is not intended to create, and receipt of it does not constitute, an attorney-client relationship. Communicating with Foley through this website by email, blog post, or otherwise, does not create an attorney-client relationship for any legal matter. Therefore, any communication or material you transmit to Foley through this blog, whether by email, blog post or any other manner, will not be treated as confidential or proprietary. The information on this blog is published “AS IS” and is not guaranteed to be complete, accurate, and or up-to-date. Foley makes no representations or warranties of any kind, express or implied, as to the operation or content of the site. Foley expressly disclaims all other guarantees, warranties, conditions and representations of any kind, either express or implied, whether arising under any statute, law, commercial use or otherwise, including implied warranties of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Foley or any of its partners, officers, employees, agents or affiliates be liable, directly or indirectly, under any theory of law (contract, tort, negligence or otherwise), to you or anyone else, for any claims, losses or damages, direct, indirect special, incidental, punitive or consequential, resulting from or occasioned by the creation, use of or reliance on this site (including information and other content) or any third party websites or the information, resources or material accessed through any such websites. In some jurisdictions, the contents of this blog may be considered Attorney Advertising. If applicable, please note that prior results do not guarantee a similar outcome. Photographs are for dramatization purposes only and may include models. Likenesses do not necessarily imply current client, partnership or employee status.

Insights

Will Other Tech Companies Join Microsoft in Honoring CCPA Across the U.S.?
18 November 2019
Internet, IT & e-Discovery Blog
Get Off My Lawn! Employers Gain Expanded Rights to Keep Unions Away from Their Property
18 November 2019
Labor & Employment Law Perspectives
Debunking Conventional Labor and Employment Wisdom
18 November 2019
Labor & Employment Law Perspectives
Racing to Innovate: The OESA’s 2019 Industry Outlook Panel
14 November 2019
Dashboard Insights
PATH Summit 2019
18-20 December 2019
Arlington, VA
Madison CLE Days
18-19 December 2019
Madison, WI
MedTech Impact Expo & Conference
13-15 December 2019
Las Vegas, NV
Review of 2020 Medicare Changes for Telehealth
11 December 2019
Member Call