Having someone else file a patent application to retain micro entity status

Question

Budgetary concerns require me to file my patent applications under micro entity status. I meet all requirements. However, one cannot submit more than five (maximum four previous) applications at the micro entity filing rate. I have more than five separate inventions, which makes this a problem. The obvious thing to do is to file them under a different name, but there is a technicality which states that one cannot file patents in another person's name with any agreement of payment between the parties. However, I wonder what exactly constitutes payment. What if, for example, I file some patents in my wife's name (or my mother's name, or my sister's, etc.), and any income generated by the patents is directed into an account of which we are joint owners? Is this legal?

Answer 1

You probably shouldn't do this. Even if you filed it in another person's name, you would still be the inventor (who must also satisfy the application filing limit).

37 CFR 1.29(a) requires (emphasis added):

(a) To establish micro entity status under this paragraph, the applicant must certify that: ...

(2) Neither the applicant nor the inventor nor a joint inventor has been named as the inventor or a joint inventor on more than four previously filed patent applications, other than applications filed in another country, provisional applications under 35 U.S.C. 111(b), or international applications for which the basic national fee under 35 U.S.C. 41(a) was not paid;

MPEP § 509.04(a) provides a bit of extra discussion:

All such applications naming the inventor or a joint inventor are counted toward the application filing limit, whether the applications were filed before, on, or after March 19, 2013. Further, it does not matter whether the previously filed applications are pending, patented, or abandoned; they are still included when counting to determine whether the application filing limit has been reached.

It therefore seems quite clear that you would not satisfy the requirements for claiming micro entity status.

The consequences of claiming the wrong entity status can be dire. There are a number of examples in the past relating to wrongly claimed small entity status, where the patents were consequently unenforceable. I would assume the outcome would be no different for wrongly claiming micro entity status.

Answer 2

I am a layman but it sounds like you are trying to skirt the law and it doesn't sound legal.

I suggest when you are ready to file the others do so as a small entity where fees are reduced by half ... hopefully by the time you are ready you would have earned some income from the previous patents:

http://www.uspto.gov/learning-and-resources/fees-and-payment/uspto-fee-schedule

http://www.uspto.gov/sites/default/files/aia_implementation/AC54_Small_Entity_Compliance_Guide_Final.pdf