(308) DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
[Docket No.: PTO-P-2012-0055]
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, 2013, to better
gauge whether the Extended Missing Parts Program offers sufficient benefits
to the patent community for it to be made permanent.
DATES: Duration: The Extended Missing Parts Pilot Program will run through
December 31, 2013. Therefore, any certification and request to participate
in the Extended Missing Parts Pilot Program must be filed before December
31, 2013. 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 Deputy 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
extended the Extended Missing Parts Pilot Program until December 31, 2012.
See Extension of the Extended Missing Parts Pilot Program, 76 FR 78246
(Dec. 16, 2011), 1374 Off. Gaz. Pat. Office 113 (Jan. 10, 2012).
The USPTO is extending the Extended Missing Parts Pilot Program until
December 31, 2013. The USPTO may further extend the Extended Missing Parts
Pilot Program, or may discontinue the pilot program after December 31,
2013, 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
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application filed under 35 U.S.C. 111(a) to be filed within twelve months
after the date on which the corresponding 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/AIA/421 titled "Certification and Request for
Extended Missing Parts Pilot Program;" (2) the application must be an
original (i.e. not a Reissue) 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 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) the executed
inventor's oath or declaration in compliance with 37 CFR 1.63 or an
application data sheet containing the information specified in 37 CFR
1.63(b); (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 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/AIA/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/AIA/421 is available on the USPTO Web site at
http://www.uspto.gov/forms/aia0421.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
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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 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(a) 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.
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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 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).
January 3, 2013 TERESA STANEK REA
Deputy Under Secretary of Commerce for
Intellectual Property and Deputy Director of the
United States Patent and Trademark Office
[1387 OG 46]