Merek, Blackmon & Voorhees provides a full range of Intellectual Property services for patents, trademarks and copyrights. Please Contact us if you have any questions or for a quote on help with your legal needs. MBV offers free initial consultations and a FREE HELP LINE.*


How to determine if you qualify for Micro-Entity Status 75% Discounted Government Patent Fees

The Patent Office introduced a new government fee schedule effective March 19, 2013. This new schedule importantly provides for a new fee structure (“applicant segment:) including 75% discount for many of the Patent fees including filing, extensions, issue fee and maintenance fees for “MICRO-ENTITIES” (while you qualify**) as a lower cost alternative to the existing 50% discount for small entities. While all of the details are being finalized, the following is a quick guide to determine if you qualify for the discount and a brief explanation of the terms used. Please see the Micro Enity Guide & Rules or the PTO New Fee Schedule (effective March 19, 2013) for more information. PLEASE NOTE THAT THIS DISCOUNT IS FOR GOVERNMENT FEES AND DOES NOT APPLY TO MBV LEGAL FEES OR BILLING RATES. AN MBV FEE SHEET IS AVAILABLE ON REQUEST SHOWING CURRENT STANDARD MBV RATES AND CHARGES AND ASSOCIATED GOVERNMENT FILING FEES.

See PTO Form SB015a to determine if you qualify as a MICR-ENITY. The following information may answer questions you have on the form, but please see the PTO Official Gazette for the latest rules regarding Micro-Entities.

The AIA defines (in 37 CFR 1.29(a)) a “Micro Entity” as an applicant who certifies AT THE TIME ANY FEE IS PAID that he/she:

  • Qualifies as a small entity;
  • Has not been named as an inventor on more than four (4) previously filed patent applications;
  • Did not, in the calendar year preceding the calendar year in which the applicable fee is paid, have a gross income exceeding 3 times the median household income; and
  • Has not assigned, granted, or conveyed (and is not under obligation to do so) a license or other ownership interest in the application concerned to an entity that, in the calendar year preceding the calendar year in which the applicable fee is paid, had a gross income exceeding 3 times the median household income (i.e., less than around $150,000 in the previous year).

Further details, definitions and explanations for the qualifications that EACH joint inventor (or assignee or licensee) must meet:

  • SMALL ENTITY QUALIFICATION: To qualify, the owner of the applicaiton must be an individual, joint individuals OR a company/entity having less than 500 employees OR be a non-profit organization. See 37 CFR 1.27(a).
  • CALCULATING “Four” PREVIOUS APPLICATIONS: The number of applications counted do NOT include:
    • U.S. PROVISIONAL applications;
    • FOREIGN national applications;
    • PCT applications that are not successfully U.S. nationalized. That is, a PCT does not count IF the base National filing fees (under 35 U.S.C 41(a)) have not been paid. If the PCT has not gone further than the international PCT stage (by paying the U.S. base filing fee), it does not count; or
    • Any application from PRIOR EMPLOYMENT, IF ALL OWNERSHIP of the application was assigned or was obligated to be assigned to the inventor’s previous employer.
  • MEDIAN HOUSEHOLD INCOME: The Patent Office will publish a set yearly figure (About $150,162) on their website HERE that will list the “three times median household income” (as calculated by the CENSUS Bureau) to be used for comparison. This will also be listed on form PTO/SB/15A (“Micro-Entity Status Form”)
  • MARRIED JOINT FILING STATUS VERSUS SINGLE TAXPAYERS: The PTO has said (at least in comments) that a spouse’s income does not count, but the revenue calculation is made as if the inventor were filing separately, but including pro rata joint income from investements, etc. The spouse’s ownership interest in the application is also not considered, since it arises under state law and not by assignment.
  • If you LICENSE OR ASSIGN your invention (or are obligated to do so), the assignee or license must qualify (as to gross income) in place of the inventor.
  • Institutions of HIGHER EDUCATION under 35 U.S.C. 125(d) may qualify as a micro entity under separate standards.
  • If you LOSE MICRO-ENTITY STATUS, you may not need to file a new statement/assertion for SMALL ENTITY STATUS to pay fees at the small entity level. It will be assumed that micro-entities qualified for small entity status.
  • See Micro-Entity Implementation Rules; 35 U.S.C. 123(a)-(d); Micro-Entity Compliance Guide; or 37 CFR 1.29 for more information

**IMPORTANT NOTE ON TIMING OF QUALIFICATION: Remember that EACH TIME YOU PAY a patent fee at the micro-entity level, you must ensure that you still qualify on all accounts as a micro-entity (i.e., using your previous year’s income, but current qualifications for all other factors). “Small Entity” needed only requalify at payment of issue fee or maintenance fees. See 37 CFR 1.27(g)(1)

**Please review the entire micro-entity rules to ensure that you qualify before paying any discounted government fees as there may deleterious consequences to not paying the full government fees owed. See See 37 CFR 1.27(h). While we have made every effort to ensure that the above information is accurate, the above information may include assumptions and over simplifications of the rules that apply only for typical situations and are intended to promote a discussion with your counsel, not to be relied upon as legal advice. Your situation may include unique factors with different results. Please ensure that you qualify for the fee level paid or seek legal advicebefore paying discount fees.

Intellectual Property

Intellectual Property is the general name for products of the human intellect
such as an idea, invention, expression, unique name, business method, technology
transfer, industrial process or chemical formula. Intellectual Property Law is a highly specialized field. In the United States, only a specially registered Patent Attorney or Patent Agent can represent an Applicant to prosecute a patent application before the U.S. Patent and Trademark Office (“PTO”). Intellectual Property is broken down into Patents, Trademarks, Copyrights or Trade Secrets, each of which is explained below.

WATCH SHORT VIDEO: The Differences Between Patents, Trademarks & Copyrights (5:55)


Patent Overview and Timeline

A patent is awarded to an Inventor to give him or her the right to bar others from making, using or selling his or her invention in the United States for up to 20 years (from the filing or priority date) in exchange for disclosing his invention and its working to the public through the patent application process.  In order to be awarded a patent, the invention or idea must be new and non-obvious, not patented by someone else, and must be useful or demonstrate some utility, in one of the general subject matter areas enumerated by the patent laws.  Patents are awarded on a variety of inventions and ideas ranging from drug formulas to mascara brushes, tire treads to telecommunication switches, golf clubs to new varieties of roses.

One Year Time Limit to File and First to File
If your invention has been described in a printed publication anywhere, has been in public use or on sale more than one year before the date on which an application for patent is filed in this country, you may be barred from receiving a patent on your invention. (See 35 U.S.C. § 102(b)). Additionally, there may be many other legal and/or business reasons why you would want to file a patent application BEFORE disclosure or offer for sale of your invention. This is especially true as the U.S. goes to a from First to Invent system to First to File provisions on about March 16, 2013 in accordance with the America Invents Act. After this date, if another party arrives at the same invention independently and you file after the date of their filing on the same invention, you could lose rights to the invention. Additionally, if you are planning to file in a foreign country, your time period for filing on your invention may be further reduced. You should seek the advice of a patent attorney on your particular situation before disclosing your invention publically or offering it for sale in this coutnry or even in another country.

WATCH SHORT VIDEO: Time Periods for Filing a Patent Application (5:20)

Timeline for Prosecution of a Patent
The following is a general guide as to the time line that an application might follow.** However, your application will follow its own time line based on many factors within or outside the control of you, your patent attorney, third parties, and the Patent Office personnel.



Week 1-2
Patent Search
A typical first step in filing a patent is to perform a search (“novelty search”) to find out if the
idea or invention already has been awarded a patent.  The PTO has a Search Room with a number of computer databases such as EAST and WEST on the public search computers for searching the more than 8 million patents. While these patents can be searched over teh Internet, the PTO computers have many features and speeds not available or practical through the Internet based (PatFT) database or through the several free, self-serve databases. MBV is located near the Patent Office and utilizes these public search room databases to perform preliminary searches to generate a patentability report that includes information and guidance about whether or not an application for a patent should be prepared.———————-
Notes about Searches: While a novelty search is not required for filing, it may be useful in predicting whether your filing might ultimately be successful or in uncovering whether other parties are inventing or publishing in your particular area that might be obstacles to your application being allowed (“approved”). The search may also allow your patent attorney to draft more appropriate claims to your invention after learning what third party publications have allegedly added to the art.A novelty search is a very brief search looking to the subject of the novelty of your invention. Other more extensive types of searches are available at a greater costs, should you have a need for more certainty about other patents and publications that may exist. These more comprehensive searches include “state of the art,” “right to use,” “infringement,” “invalidity,” and “due diligence,” just to name a few. No search of any scope can ever tell you with absolute certainty the existence of all relevant publications, art or patents that might exist. Please contact us if you have any questions about searches and their limitations.
Week 3-6
Patent Application Filing
If the patentability report is favorable, then a patent attorney at MBV can prepare an Application on the invention. There are several types of applications, including provisional and non-provisional (“utility”) applications, design applications, and plant applications. Note: Only a registered patent attorney or patent agent can represent an applicant before the United States Patent and Trademark Office in a patent application. The application typically includes a written specification, drawings, and claims describing the invention. The application will also need to include the appropriate Filing Fee associated with the type of application filed. Once your application is filed, your application is now “patent pending.” In many cases, MBV can provide you a fixed fee or set fee range for completing a patent search or filing a patent application. Please note that continued projects/responses to PTO office actions and communications (and associated legal and/or fees) will be required in most circumstances to continue the application towards issuance as described below.
Week 8-10 VIDEO: Time Periods for Filing a Patent Application (5:20)
VIDEO: How to Write and File a Provisional Patent Application (4:45)After your application is filed, the Patent Office will return a filing receipt acknowledging your filing and providing an application serial number and foreign filing license review.
Month 22-33***
Patent Examination
After filing the application, your idea or invention will be in a
“Patent Pending” state during which a Patent Examiner at the PTO will review your application to determine its patentability.   He or she will review your application against other patents and publications to determine if the application is novel and unobvious.  If this is the case, then the application will be allowed. If the Patent Examiner determines otherwise, then he or she may reject the application.  If an application is rejected, the Applicant is given an opportunity to respond to the rejection. MBV will work with you to develop various options for responding including in most cases either amending the claims of the application and/or making legal arguments as to why the application should be allowed as is or after amendment. The costs of these responses will vary according to the types of rejections and responses involved. MBV will develop a quote containing the estimated or fixed fees or fee ranges for responding to the Patent Office and discuss these with you as part of the discussion of the options and their implications so that you can make an informed judgment on the avenue best suited for your needs. It is important that you file a response promptly or you will have to pay sometimes costly Extension Fees or Abandonment. The Examiner will then give fair consideration to the arguments and amendments to the application and send the application to allowance or repeat the process above through another office action. It is not uncommon an Applicant to respond to a number of Office Actions before the application is allowed or abandoned.
Year 3
Allowance and Issue
Upon allowance of an application by the PTO, an Issue Fee will have to be paid and appropriate documents filed before the patent application will issue as a patent. You can only change the designation of your product from “patent pending” to “patented” after you receive the ribbon copy of the patent from the Patent Office.VIDEO: Patents, Trademarks & Copyrights Labeling and Notice

These are only a few of the events that may happen during the pendency of the application. An experienced patent attorney will be able to give you his insight and candid advice into the likelihood of success or failure of an application at the Patent Office, but there is no certain way to predict the course of any particular application through the Patent Office from filing to issue except to file the application and see what happens. However, a patent attorney can help you to respond to each communication from the Patent Office in a timely manner and can help comply with the many rules and laws necessary to see the application through to issuance or termination. An experience patent attorney can help you moderate your expectations and resolve through the ups and downs during the application’s pendency.

Year 7 thru 15
Maintenance Fees
You will also be responsible for Maintenance Fees approximately four, eight and twelve years after issue to maintain the enforceability of the patent throughout its life.VIDEO: What is a Patent and How Long Does it Last?
Month 1-12
Foreign Patents
Patent Cooperation Treaty (“PCT”) applications and foreign national phase filings are also available as part of a foreign patent protection strategy. Due to the numerous options and fee variations through PCT filings and foreign national filings, estimates are made on a case by case basis and may be higher than for related U.S. applications. The use of a local attorney in the respective country for each direct foreign filing as well as translations into the local official language and other documentation such as legalizations, apostilles, notarizations and certifications must also be factored into the costs. Please contact us for estimates and information on such matters. NOTE: There are also important considerations important to the timing of a foreign application, such as absolute novelty, which may require filing even before filing of a U.S. patent application that must be considered or the applicant may be barred from filing a foreign application in many of the foreign countries. Each country has its own set of rules and treaties with the U.S. (or lack thereof) that must be considered well in advance of filing in a particular country. However, in general, a foreign application may typically be filed within one year of filing the related U.S. application or within 30 months if a PCT application has been filed. Please contact us if you have any questions on foreign filings for any particular countries
** There is no such thing as a “typical” timeline for a patent application to be advanced through the Patent Office. This time line is merely based broadly on several past experiences and loose averages, and is provided merely for planning and informational purposes. Your application will likely not follow this exact path.

***You may be able to expedite the prosecution of the application by paying additional fees and submitting the necessary documentation, however these may significantly increase the cost of filing. Inventors over the age of 65 may automatically qualify to enroll in expedited prosecution for no additional government fees.


Trademark Overview

A trademark is a word, name, symbol, slogan, sounds or color used to distinguish your goods and services from everyone else.  A trademark can be registered and renewed for as long as it is being used.   Trademarks range from professional sporting team logos to the phrase ‘Blue Light Special’ used by K-Mart to the General Electric slogan “we bring good things to light.”

Filing a trademark is a more streamlined process than for a patent application, but like other legal documents must be completed with due care.  A trademark application can be filed prior to use of the mark in commerce (e.g., prior to interstate sales) or after use of the mark begins.  MBV will assist in the preparation of the application and filing of the application with the Trademark Office.  After the application has been filed, a Trademark Examiner conducts a search to determine if the given mark is confusingly similar to an existing trademark and if all of the sections of the application, such as the description of the goods and services, are complete and accurate. Marks filed prior to “use in commerce” are given a period of time to perfect the application by filing a “statement of use” when the use in commerce begins. If the mark is not in use, extensions of time must be sought until the mark is used. A trademark will not be registered until such use in commerce commences.  If the trademark is approved for registration, the trademark gets published in the Official Gazette of the Patent Office, a national publication.  The general public may express concern if they feel the mark is too close to their existing trademark. If no one writes opposes the trademark, then the Trademark Examiner sends the mark to be registered.


Copyright Overview

A copyright is the legal protection automatically granted to the creations of authors, musicians, writers, artists and other intellectual works.   A copyright is awarded for the life of the creator plus 70 years for works created after 1978.  Motion pictures, photographs, songs, poems, videos, books, catalogs, software and sales literature are examples of works that can be copyrighted.

In order to obtain a copyright registration, which grants the author certain additional legal rights and presumptions, MBV needs to prepare a copyright application and file the application with the Copyright Office.  If the provisions of copyright law have been complied with, then a certificate of registration is issued to the copyright owner. Registration may be necessary in order to bring a copyright infringement suit against another party and/or to be eligible for statutory damage claims in the suit.

Who Owns the Copyright when One Party is Paid to Create the Work for Another?
(“Works Made for Hire”)

An important consideration in copyrights is who owns the copyright when one entity carries out the design/creation for another and the parties have not expressly assigned ownership in a contract beforehand. When a company hires an outside contractor to create a work (e.g., a computer program, art work, brochure, etc.) for the company, the contractor may own the rights to the work even though the company is paying the contractor expressly to make the work for the company’s use. While all of the possible factors that could come into play in the determination are too numerous to discuss here, the following is a very simple illustration of the statutory “Work for Hire” definition to determine if something is a) “work made for hire” and owned by the employer or b) a work made by an independent agent and thus owned by the agent. For more information, see the Copyright Guide to Works Made for Hire.

A work in general is initially owned by the creator of the work, except when it is a “Work Made for Hire,” defined under 17 U.S.C. § 101 as:

  • A work prepared by an employee** within the scope of his or her employment; or
  • The parties expressly agree in a written instrument that the work shall be considered a work made for hire, and
    the work is specially ordered or commissioned for use as a contribution to a collective work, as a part of a motion picture or other audiovisual work, as a translation, as a supplementary work, as a compilation, as an instructional text, as a test, as answer material for a test, or as an atlas.

**Note**Noteemployeebroader than the “common understanding” of the termTests to determine whether an individual is include, but are not limited to, looking at whether the employee creates the work at the employer’s location using the employer’s resources, whether the employer controls the employee’s schedule, and whether the employer provides benefits to the employee and withholds taxes.

Examples of Works Made for Hire:

  • A software program created within the scope of his or her duties by a staff programmer for Creative Computer Corporation;
  • A newspaper article written by a staff journalist for publication in the newspaper that employs him;
  • A musical arrangement written for XYZ Music Company by a salaried arranger on its staff; and
  • A sound recording created by the salaried staff engineers of ABC Record Company.

Contact us to find out how to avoid ambiguities in ownership before you contract with an outside agent to create a work for you.


Trade Secret Overview

A trade secret is legal protection given to a company to protect their invention, process or business information.   In order to be protected by the court the information must be secret, substantial and valuable.   Proprietary client and customer information such as prices for services and contract terms can be protected.  You can also protect methods or processes such as how to apply paint to a car.  The most famous trade secret is probably the recipe for Coca-Cola™.