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I am eligible for micro-entity filing status on my patent applications. However, it requires that one's name not be listed on more than four previous patents (I have zero currently), which limits me to five patents in total at the micro-entity fee rate. This is a problem, as I have nine separate inventions that I would like to patent. The regulations also stipulate that you cannot have someone else file a patent in their name with any agreement - written or otherwise - to pay you any income generated by that patent. This prevents individuals from filing more than five patents at the micro-entity rate by having others file for them. However, I have identified two possible ways around this:

  1. After filing the maximum five patents at micro-entity status in my own name, I have someone else file the remaining four patents - without my name listed - and that person then sells those patents to me (for $1 each) after they are issued.

  2. Similar to the above, another person files the other four patents in their own name. Instead of selling the patents to me, however, they market the patents themselves, and place any income created by them into an account of which we are joint owners.

Could either of these work? Thank you in advance for any input.

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    I'm rather certain thats not legal. – DonQuiKong Jan 20 '17 at 7:02
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In both cases, you are suggesting lying about the inventorship. The details of each of your schemes is largely irrelevant in this regard.

First, you are the inventor: there is nothing you can do subsequently that would change that.

Inventorship and micro-entity statu

37 CFR 1.29 provides the requirements for micro entity status. In particular, 37 CFR 1.29(a)(2) requires:

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.

Thus (as you are aware) your later four applications would be barred due to your inventorship.

But how does the USPTO know who the inventor is?

35 USC 115(a) requires:

An application for patent that is filed under section 111(a) or commences the national stage under section 371 shall include, or be amended to include, the name of the inventor for any invention claimed in the application. Except as otherwise provided in this section, each individual who is the inventor or a joint inventor of a claimed invention in an application for patent shall execute an oath or declaration in connection with the application.

So you have an obligation to name the inventors in each application you file.

So we could just lie about the inventorship?

Perhaps.

However, 35 USC 115(i) makes reference to the penalty for filing a false declaration:

Any declaration or statement filed pursuant to this section shall contain an acknowledgment that any willful false statement made in such declaration or statement is punishable under section 1001 of title 18 by fine or imprisonment of not more than 5 years, or both.

So there is a relatively steep penalty for filing a false statement about the inventorship.

Conclusion

While many of us from time to time might be tempted to improve our station through deception, the penalties for being caught doing so are so steep that it is rarely worthwhile.

In this case, you will therefore need to weigh up whether saving a few hundred dollars is worth the risk of imprisonment if you are found out.

  • Thank you very much for your detailed response; I greatly appreciate it. If I may, I have a follow-up question. 37 CFR 1.29(a)(2) requires that the inventor not be named on "more than four previously filed patent applications, other than [...] international applications for which the basic national fee under 35 U.S.C. 41(a) was not paid." Forgive my ignorance, but does "international applications" in this case refer to PCT applications? Thanks again. – m.chang Jan 22 '17 at 8:53
  • @m.chang That's correct – Maca Jan 23 '17 at 2:29
  • If I understand this correctly, this means that I can actually file ten patent applications at the micro entity rate - five as standard utility patents and five as PCT? – m.chang Jan 23 '17 at 18:35
  • @m.chang Yes, (though only until national phase, when they'll have to be small entity). That said, you'll only get the USPTO's component of the PCT fees at the micro rate: most of PCT fees are set by WIPO and will be at the standard rate. – Maca Jan 23 '17 at 23:21
  • @m.chang But filing a PCT as your first filing to avoid paying slightly more fees to the USPTO is a terrible idea. A PCT costs a lot more than you'll save. And you miss out on a year of the patent term. – Maca Jan 23 '17 at 23:22

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