(286) DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
[Docket No. PTO-P-2011-0076]
Extension of the Extended Missing Parts Pilot Program
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Notice.
SUMMARY: The United States Patent and Trademark Office (USPTO)
implemented a pilot program (Extended Missing Parts Pilot Program) in
which an applicant, under certain conditions, can request a twelve-
month time period to pay the search fee, the examination fee, any
excess claim fees, and the surcharge (for the late submission of the
search fee and the examination fee) in a nonprovisional application.
The Extended Missing Parts Pilot Program benefits applicants by
permitting additional time to determine if patent protection should be
sought-at a relatively low cost-and by permitting applicants to focus
efforts on commercialization during this period. The Extended Missing
Parts Pilot Program benefits the USPTO and the public by adding
publications to the body of prior art, and by removing from the USPTO's
workload those nonprovisional applications for which applicants later
decide not to pursue examination. The USPTO is extending the Extended
Missing Parts Pilot Program until December 31, 2012, to better gauge
whether the Extended Missing Parts Program offers sufficient benefits
to the patent community for it to be made permanent.
DATES: Effective Date: December 16, 2011.
Duration: The Extended Missing Parts Pilot Program will run through
December 31, 2012. Therefore, any certification and request to
participate in the Extended Missing Parts Pilot Program must be filed
before December 31, 2012. The USPTO may further extend the pilot
program (with or without modifications) depending on the feedback
received and the continued effectiveness of the pilot program.
FOR FURTHER INFORMATION CONTACT: Eugenia A. Jones, Senior Legal
Advisor, Office of Patent Legal Administration, Office of the Associate
Commissioner for Patent Examination Policy, by telephone at (571) 272-
7727, or by mail addressed to: Mail Stop Comments-Patents,
Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450,
marked to the attention of Eugenia A. Jones.
Inquiries regarding this notice may be directed to the Office of
Patent Legal Administration, by telephone at (571) 272-7701, or by
electronic mail at PatentPractice@uspto.gov.
SUPPLEMENTARY INFORMATION: The USPTO implemented a change to missing
parts practice in certain nonprovisional applications as a pilot
program (i.e., Extended Missing Parts Pilot Program) after considering
written comments from the public. See Pilot Program for Extended Time
Period To Reply to a Notice to File Missing Parts of Nonprovisional
Application, 75 FR 76401 (Dec. 8, 2010), 1362 Off. Gaz. Pat. Office 44
(Jan. 4, 2011).
The USPTO is extending the Extended Missing Parts Pilot Program
until December 31, 2012. The USPTO may further extend the Extended
Missing Parts Pilot Program, or may discontinue the pilot program after
December 31, 2012, depending on the results of the program. The
requirements of the program are reiterated below. Applicants are
strongly cautioned to review the pilot program requirements before
making a request to participate in the Extended Missing Parts Pilot
Program.
The USPTO cautions all applicants that, in order to claim the
benefit of a prior provisional application, the statute requires a
nonprovisional application filed under 35 U.S.C. 111(a) to be filed
within twelve months after the date on which the corresponding
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provisional application was filed. See 35 U.S.C. 119(e). It is
essential that applicants understand that the Extended Missing Parts
Pilot Program cannot and does not change this statutory requirement.
I. Requirements: In order for an applicant to be provided a twelve-
month (non-extendable) time period to pay the search and examination
fees and any required excess claims fees in response to a Notice to
File Missing Parts of Nonprovisional Application under the Extended
Missing Parts Pilot Program, the applicant must satisfy the following
conditions: (1) Applicant must submit a certification and request to
participate in the Extended Missing Parts Pilot Program with the
nonprovisional application on filing, preferably by using Form PTO/SB/
421 titled "Certification and Request for Extended Missing Parts Pilot
Program;" (2) the application must be an original nonprovisional
utility or plant application filed under 35 U.S.C. 111(a) within the
duration of the pilot program; (3) the nonprovisional application must
directly claim the benefit under 35 U.S.C. 119(e) and 37 CFR 1.78 of a
prior provisional application filed within the previous twelve months;
the specific reference to the provisional application must be in the
first sentence of the specification following the title or in an
application data sheet under 37 CFR 1.76 (see 37 CFR 1.78(a)(5)); and
(4) applicant must not have filed a nonpublication request.
As required for all nonprovisional applications, applicant will
need to satisfy filing date requirements and publication requirements.
In accordance with 35 U.S.C. 122(b), the USPTO will publish the
application promptly after the expiration of eighteen months from the
earliest filing date to which benefit is sought. Therefore, the
nonprovisional application should also be in condition for publication
as provided in 37 CFR 1.211(c). The following are required in order for
the nonprovisional application to be in condition for publication: (1)
The basic filing fee; (2) an executed oath or declaration in compliance
with 37 CFR 1.63; (3) a specification in compliance with 37 CFR 1.52; (4)
an abstract in compliance with 37 CFR 1.72(b); (5) drawings in compliance
with 37 CFR 1.84 (if applicable); (6) any application size fee required
under 37 CFR 1.16(s); (7) any English translation required by 37 CFR
1.52(d); and (8) a sequence listing in compliance with 37 CFR 1.821-1.825
(if applicable). The USPTO also requires any petition under 37 CFR 1.47 to
be granted, any compact disc requirements to be satisfied, and an English
translation of the provisional application to be filed in the provisional
application if the provisional application was filed in a non-English
language and a translation has not yet been filed. If the requirements
for publication are not met, applicant will need to satisfy the
publication requirements within a two-month extendable time period.
As noted above, applicants should request participation in the
Extended Missing Parts Pilot Program by using Form PTO/SB/421. For
utility patent applications, applicant may file the application and the
certification and request electronically using the USPTO electronic
filing system, EFS-Web, and selecting the document description of
"Certification and Request for Missing Parts Pilot" for the
certification and request on the EFS-Web screen. Form PTO/SB/421 is
available on the USPTO Web site at http://www.uspto.gov/forms/sb0421.pdf.
Information regarding EFS-Web is available on the USPTO Web
site at http://www.uspto.gov/ebc/index.jsp.
The utility application including the certification and request to
participate in the pilot program may also be filed by mail (e.g., by
"Express Mail" in accordance with 37 CFR 1.10) or hand-carried to the
USPTO. However, applicants are advised that, effective November 15,
2011, as provided in the Leahy-Smith America Invents Act, a new
additional fee of $400.00 for a non-small entity ($200.00 for a small
entity) is due for any nonprovisional utility patent application that
is not filed by EFS-Web. See Public Law 112-29, § 10(h), 125 Stat.
283, 319 (2011). This non-electronic filing fee is due on filing of the
utility application or within the two-month (extendable) time period to
reply to the Notice to File Missing Parts of Nonprovisional
Application. Applicants will not be given the twelve-month time period
to pay the non-electronic filing fee. Therefore, utility applicants are
strongly encouraged to file their utility applications via EFS-Web to
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avoid this additional fee.
For plant patent applications, applicant must file the application
including the certification and request to participate in the pilot
program by mail or hand-carried to the USPTO since plant patent
applications cannot be filed electronically using EFS-Web. See Legal
Framework for Electronic Filing System Web (EFS-Web), 74 FR 55200 (Oct.
27, 2009), 1348 Off. Gaz. Pat. Office 394 (Nov. 24, 2009).
II. Processing of Requests: If applicant satisfies the requirements
(discussed above) on filing of the nonprovisional application and the
application is in condition for publication, the USPTO will send
applicant a Notice to File Missing Parts of Nonprovisional Application
that sets a twelve-month (non-extendable) time period to submit the
search fee, the examination fee, any excess claims fees (under 37 CFR
1.16(h)-(j)), and the surcharge under 37 CFR 1.16(f) (for the late
submission of the search fee and examination fee). The twelve-month
time period will run from the mailing date, or notification date for
e-Office Action participants, of the Notice to File Missing Parts. For
information on the e-Office Action program, see Electronic Office
Action, 1343 Off. Gaz. Pat. Office 45 (June 2, 2009), and
http://www.uspto.gov/patents/process/status/e-Office_Action.jsp. After an
applicant files a timely reply to the Notice to File Missing Parts
within the twelve-month time period and the nonprovisional application
is completed, the nonprovisional application will be placed in the
examination queue based on the actual filing date of the nonprovisional
application.
For a detailed discussion regarding treatment of applications that
are not in condition for publication, processing of improper requests
to participate in the program, and treatment of authorizations to
charge fees, see Pilot Program for Extended Time Period To Reply to a
Notice to File Missing Parts of Nonprovisional Application, 75 FR
76401, 76403-04 (Dec. 8, 2010), 1362 Off. Gaz. Pat. Office 44, 47-49
(Jan. 4, 2011).
III. Important Reminders: Applicants are reminded that the
disclosure of an invention in a provisional application should be as
complete as possible because the claimed subject matter in the later-
filed nonprovisional application must have support in the provisional
application in order for the applicant to obtain the benefit of the
filing date of the provisional application.
Furthermore, the nonprovisional application as originally filed
must have a complete disclosure that complies with 35 U.S.C. 112, first
paragraph, which is sufficient to support the claims submitted on
filing and any claims submitted later during prosecution. New matter
cannot be added to an application after the filing date of the
application. See 35 U.S.C. 132(a). In order to be accorded a filing
date, a nonprovisional application must include a specification
concluding with at least one claim as prescribed by 35 U.S.C. 112 and a
drawing as prescribed by 35 U.S.C. 113. See 35 U.S.C. 111(a). While
only one claim is required in a nonprovisional application for filing
date purposes and applicant may file an amendment adding additional
claims later during prosecution, applicant should consider the benefits
of submitting a complete set of claims on filing of the nonprovisional
application. This would reduce the likelihood that any claims added
later during prosecution might be found to contain new matter. Also, if
a patent is granted and the patentee is successful in litigation
against an infringer, provisional rights to a reasonable royalty under
35 U.S.C. 154(d) may be available only if the claims that are published
in the patent application publication are substantially identical to
the patented claims that are infringed, assuming timely actual notice
is provided. Thus, the importance of the claims that are included in
the patent application publication should not be overlooked.
Applicants are also advised that the extended missing parts period
does not affect the twelve-month priority period provided by the Paris
Convention for the Protection of Industrial Property (Paris
Convention). Thus, any foreign filings must still be made within twelve
months of the filing date of the provisional application if applicant
wishes to rely on the provisional application in the foreign-filed
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application or if protection is desired in a country requiring filing
within twelve months of the earliest application for which rights are
left outstanding in order to be entitled to priority.
For additional reminders, see Pilot Program for Extended Time
Period To Reply to a Notice to File Missing Parts of Nonprovisional
Application, 75 FR 76401, 76405 (Dec. 8, 2010), 1362 Off. Gaz. Pat.
Office 44, 50 (Jan. 4, 2011).
December 6, 2011 DAVID J. KAPPOS
Under Secretary of Commerce for Intellectual Property and
Director of the United States Patent and Trademark Office
[1374 OG 113]