U.S. Patent and Trademark Office Clarifies its Rules on Small Entity Qualifications
In the 9th edition of the TerraLex Intellectual Property Newsletter, we discussed the consequences of improperly claiming small entity status as articulated by the Court of Appeals for the Federal Circuit in Ulead Systems, Inc. v. Lex Computer Management Corp. (351 F.3d 1120 (Fed. Cir December 9, 2003)). We also noted that ambiguities in the present small entity rules have lead to confusion over whether an applicant may claim small entity status. As part of the changes to support implementation of the U.S. Patent and Trademark Office 21st Century Plan (69 Federal Register 56482, September 21, 2004), new rules and commentary were recently promulgated which clarify some of these ambiguities, in particular whether small companies based outside the United States could quality for small entity status, and what is "an obligation" for purposes of small entity designations.