If a pro-se inventor, qualifying for small-entity status, licenses a patent application to an undiscounted entity such as a large corporation, does that mean that only that patent application (plus any continuations) become due for undiscounted fees (i.e. full issue and maintenance fees)?

Or does every patent the pro-se inventor files from that point on also now attract full undiscounted fees?

Or in other words, is the loss of small-entity status linked to the person or just the patent?

1 Answer 1


i. Yes. Only the assigned application assigned to ineligible entity forfeits eligibility for discount.

ii. If pro se inventor's (micro entity) income is affected by the assignment transaction in a manner that gross income crosses three times median house hold income of preceding year than only following applications (also if the application is the sixth application with USPTO i.e. beyond previous 4 + current 1 which are eligible for micro entity status fee exemption) are not eligible. Issue fee and maintenance fee of other applications and granted patents may also be affected on the basis of income.

iii. micro entity status is linked to the "person" i.e. the owner and available only to pro se inventor on income basis and institutes of higher education and employees of higher education and guided by 35 USC 123 (https://www.gpo.gov/fdsys/granule/USCODE-2012-title35/USCODE-2012-title35-partII-chap11-sec123) and 37 CFR 1.27

Small entity status

i. Assessment of status is status of owner(s) of patent right and is linked to a particular application and not to any other application.

ii. For pro se inventor (person), assignment to non-small entity affects only that particular application and not any other application.

iii. Please read https://www.law.cornell.edu/cfr/text/37/1.27

iv. Also can take advice from Inventors Assistance Center, USPTO. Toll-Free: 800-786-9199, Local: 571-272-1000, TTY: 800-877-8339

  • I can't find any income restrictions for persons. Small businesses have a limit (less than 500 employees, not more than 7M USD revenue in previous year, not more than 2M USD profit in previous year. Do the small business limits apply to individual inventors? Aug 10, 2018 at 7:48
  • These concern micro-entity status. I already know that I'm not entitled to that, as I've filed nearly 20 patents. Aug 10, 2018 at 14:50
  • @Keir Finlow-Bates. Sorry, Instead of Small entity I focused on micro-entity. I have edited my my answer. Hope it will be helpful. Aug 11, 2018 at 3:26

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