Small entity status mistakenly claimed

13. Prior to filing a patent application for a client, a registered practitioner determined that the client was

entitled to claim small entity status under 37 CFR 1.27. The practitioner filed a patent application for the

client on November 1, 2002 together with a claim for small entity status under 37 CFR 1.27. On December 2, 2002,

a Notice to File Missing Parts was mailed setting a two month period for reply and requiring the basic filing

fee and the surcharge under 37 CFR 1.16(e). The practitioner timely submitted the small entity fees for the basic

filing fee and the surcharge as required in the Notice. Shortly thereafter, the practitioner discovered that on

October 31, 2002, the day before the application was filed, the client, without advising the practitioner, had

assigned all rights in the invention that is the subject of the application to an entity that would not qualify

for small entity status under 37 CFR 1.27. In accordance with the USPTO rules and the procedures set forth in the

MPEP, which of the following actions would be the best action for the practitioner to take?

(A) File a continuing application under 37 CFR 1.53(b) with the large entity filing fee and then file a letter

of express abandonment under 37 CFR 1.138 in the original application after the continuing application has been

accorded a filing date.

(B) Promptly file a notification of loss of small entity status under 37 CFR 1.27(g) and, thereafter, pay large

entity fees whenever any subsequent fees are required.

(C) Wait until a Notice of Allowance is received and then timely submit the large entity issue fee along with a

notification of loss of small entity status under 37 CFR 1.27(g).

(D) File a paper under 37 CFR 1.28(c) requesting that the good faith error in claiming small entity status be

excused and complying with the separate submission and itemization requirements of 37 CFR 1.28(c) and including

payment of the deficiency owed.

(E) Pay the difference between the large entity filing fee and small entity filing fee and the difference

between the large entity surcharge and small entity surcharge within two months from the mail date of the Notice

to File Missing Parts.

13. ANSWER: (D) is the most correct answer. MPEP § 509.03, under the heading “Correcting Errors In Small Entity Status,”

states “37 CFR 1.28(c) provides that if small entity status is established in good faith and the small entity fees are paid

in good faith, and it is later discovered that such status as a small entity was established in error or through error the

Office was not notified of a change of status, the error will be excused upon compliance with the separate submission and

itemization requirements of 37 CFR 1.28(c)(1) and (c)(2), and the deficiency payment requirement of 37 CFR 1.28(c)(2).” (A),

(B), (C), and (E) are not correct. Small entity status was not appropriate when the assertion of small entity status was filed

with the application on November 1, 2002 and none of the actions recited in (A), (B), (C), and (E) would correct the error in

claiming small entity status. The only mechanism for correcting a good faith error in claiming small entity status is by

filing a request in compliance with 37 CFR § 1.28(c).