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General Counsel–Best Bet to Qualify a University I


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University general counsel best bet for qualifying as Institution of Higher Education for USPTO patent micro-entity fees.

Effective today Micro-Entity fees are available for inventions made by most university faculty at research institutions.  There are some caveats in seeking this status and our validator tool can walk most tech transfer officers through the basics. 

However, some tech transfer office might consider asking for a confirmation from general counsel’s office each year to verify institutional status.  Specifically, that the university meets the definition of an “institution of higher education” under Section 101(a) of the Higher Education Act of 1965.  The confirmation letter would read something like this:

Office of the General Counsel

To whom it may concern. 

20 USC § 1001 defines an Institution of Higher Education as one meeting the following criteria:

(1) admits as regular students only persons having a certificate of graduation from a school providing secondary education, or the recognized equivalent of such a certificate, or persons who meet the requirements of section 1091 (d) of this title;

(2) is legally authorized within such State to provide a program of education beyond secondary education;

(3) provides an educational program for which the institution awards a bachelor’s degree or provides not less than a 2-year program that is acceptable for full credit toward such a degree, or awards a degree that is acceptable for admission to a graduate or professional degree program, subject to review and approval by the Secretary;

(4) is a public or other nonprofit institution; and

(5) is accredited by a nationally recognized accrediting agency or association, or if not so accredited, is an institution that has been granted preaccreditation status by such an agency or association that has been recognized by the Secretary for the granting of preaccreditation status, and the Secretary has determined that there is satisfactory assurance that the institution will meet the accreditation standards of such an agency or association within a reasonable time.

As of the date of this letter, the University of XYZ (herein “XYZ”) meets the definition of an “institution of higher education” under Section 101(a) of the Higher Education Act of 1965 and 20 USC § 1001 as enumerated above.  Accordingly, XYZ is considered an “institution of higher education” for purposes of establishing micro entity status under 37 CFR 1.29(d).

The reason for this letter is to negate subsequent discovery opportunities in litigation decades from now when charges of fraud on the USPTO are asserted against the patent licensee or even the institution.  This type of information is already well-known to university counsel but tech transfer offices, faculty inventors and outside patent counsel will unlikely have the same level of institutional knowledge.

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