ME status... applicants are the college and the professor

Started by dab2d, 07-16-14 at 06:14 PM

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dab2d

Does it change anything concerning the ME status? It just seems odd to me that one is the college and the other is the inventor professor that is using his employment with the college as the ME qualifier. I was under the impression that it was the college that was the basis for the ME status, not being a professor. But once you make the inventor a co-applicant, shouldn't they qualify under some other basis since the college is already represented?
Nothing I post on this forum is legal advice.  You rely on anything I post at your own risk.  This post does not form an attorney client relationship between myself any person participating in this thread.

MYK

http://www.bpmlegal.com/howsmall.html
Quote"Micro Entities" also include applicants who certify that either:

    (1) Employee of Institution of Higher Education: the applicant's employer, from which the applicant obtains the majority of the applicant's income, is an institution of higher education as defined in section 101(a) of the Higher Education Act of 1965 (20 U.S.C. 1001(a)); or

I'm not sure if that exempts the professor from the four-application limit or income limit.
"The life of a patent solicitor has always been a hard one."  Judge Giles Rich, Application of Ruschig, 379 F.2d 990.

Disclaimer: not only am I not a lawyer, I'm not your lawyer.  Therefore, this does not constitute legal advice.

dab2d

I think it does... but does this mean a professor is free to file applications that have no bearing on their employment? I thought the entire point was to make it cheaper for colleges, not exempt professors.
Nothing I post on this forum is legal advice.  You rely on anything I post at your own risk.  This post does not form an attorney client relationship between myself any person participating in this thread.

bleedingpen

Do some more homework here. I know most universities have determined that they are not entitled to ME status (per my recollection from about a year ago).

smgsmc

Quote from: dab2d on 07-16-14 at 06:14 PM
Does it change anything concerning the ME status? It just seems odd to me that one is the college and the other is the inventor professor that is using his employment with the college as the ME qualifier. I was under the impression that it was the college that was the basis for the ME status, not being a professor. But once you make the inventor a co-applicant, shouldn't they qualify under some other basis since the college is already represented?

This strikes me as an odd combo.  I've never come across this.  In my college/university cases, the professor assigns his rights to the college/university (or business entity setup by the college/university), which is then the applicant.  So, in your instance, the professor is not assigning his rights to the college?  But then again, "the college" can't be an inventor; it can be an applicant only if it's an assignee (or some other interested party, or words to that effect).   Haven't looked into it.  Can an inventor and his assignee be joint applicants?

dab2d

Here it is:

B.   The University Cannot be the Micro Entity Applicant
Although the 37 CFR 1.29(d) basis for qualifying for micro entity status is referred to as the "institution of higher education" basis, it is not the institution of higher education that can qualify for micro entity status, but rather inventors who are employees of an institution of higher education (see 37 CFR 1.29(d)(2)(i)) or inventors or applicants who have conveyed ownership rights to an institution of higher education (see 37 CFR 1.29(d)(2)(ii)). The institution (university) logically cannot make the certifications required under 37 CFR 1.29(d)(2)(i) and (d)(2)(ii) (that the employer from which the university obtains the majority of its income is an institution of higher education as defined by section 101(a) of the Higher Education Act of 1965, or that the university itself has assigned, granted, conveyed, or is under an obligation by contract or law, to assign, grant, or convey, a license or other ownership interest in the particular application).
Nothing I post on this forum is legal advice.  You rely on anything I post at your own risk.  This post does not form an attorney client relationship between myself any person participating in this thread.

bleedingpen

Quote from: dab2d on 07-23-14 at 10:10 PM
Here it is:

B.   The University Cannot be the Micro Entity Applicant
Although the 37 CFR 1.29(d) basis for qualifying for micro entity status is referred to as the "institution of higher education" basis, it is not the institution of higher education that can qualify for micro entity status, but rather inventors who are employees of an institution of higher education (see 37 CFR 1.29(d)(2)(i)) or inventors or applicants who have conveyed ownership rights to an institution of higher education (see 37 CFR 1.29(d)(2)(ii)). The institution (university) logically cannot make the certifications required under 37 CFR 1.29(d)(2)(i) and (d)(2)(ii) (that the employer from which the university obtains the majority of its income is an institution of higher education as defined by section 101(a) of the Higher Education Act of 1965, or that the university itself has assigned, granted, conveyed, or is under an obligation by contract or law, to assign, grant, or convey, a license or other ownership interest in the particular application).


^^^ winner winner.  Chicken dinner.

smgsmc

Quote from: smgsmc on 07-23-14 at 04:21 PM
Quote from: dab2d on 07-16-14 at 06:14 PM
Does it change anything concerning the ME status? It just seems odd to me that one is the college and the other is the inventor professor that is using his employment with the college as the ME qualifier. I was under the impression that it was the college that was the basis for the ME status, not being a professor. But once you make the inventor a co-applicant, shouldn't they qualify under some other basis since the college is already represented?

This strikes me as an odd combo.  I've never come across this.  In my college/university cases, the professor assigns his rights to the college/university (or business entity setup by the college/university), which is then the applicant.  So, in your instance, the professor is not assigning his rights to the college?  But then again, "the college" can't be an inventor; it can be an applicant only if it's an assignee (or some other interested party, or words to that effect).   Haven't looked into it.  Can an inventor and his assignee be joint applicants?

Bump.  I'd be interested in answers to my question.

JimIvey

Quote from: smgsmc on 07-25-14 at 03:17 PM
Quote from: smgsmc on 07-23-14 at 04:21 PM
Can an inventor and his assignee be joint applicants?

Bump.  I'd be interested in answers to my question.

If the inventor assigns less than 100% of her interest, yes.  Otherwise, I don't think so.

Regards.
--
James D. Ivey
Law Offices of James D. Ivey
http://www.iveylaw.com
Friends don't let friends file provisional patent applications.

smgsmc

Quote from: JimIvey on 07-26-14 at 06:09 AM
Quote from: smgsmc on 07-25-14 at 03:17 PM
Quote from: smgsmc on 07-23-14 at 04:21 PM
Can an inventor and his assignee be joint applicants?

Bump.  I'd be interested in answers to my question.

If the inventor assigns less than 100% of her interest, yes.  Otherwise, I don't think so.

Regards.

Do you know whether assigning less than 100% interest is common?  I personally have never run into that with my applications; it's either been no assignment or 100% assignment.  Or does it look like the OP's university client is playing some strange game with the new rules?

JimIvey

Quote from: smgsmc on 07-26-14 at 11:33 PM
Do you know whether assigning less than 100% interest is common? 

As far as I know, it's very rare.  I've heard of it in the context of being funded by an inexperienced angel (e.g., friend or family).  I was just answering the question in red.

Regards.
--
James D. Ivey
Law Offices of James D. Ivey
http://www.iveylaw.com
Friends don't let friends file provisional patent applications.

dab2d

You can have two inventors and one inventor assigns their interest...
Nothing I post on this forum is legal advice.  You rely on anything I post at your own risk.  This post does not form an attorney client relationship between myself any person participating in this thread.

smgsmc

Quote from: dab2d on 07-29-14 at 06:57 PM
You can have two inventors and one inventor assigns their interest...

So, are you saying that one professor is,  and one professor is not, obligated to assign his rights to the university?



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