(239) DEPARTMENT OF COMMERCE
Patent and Trademark Office
[Docket No.: PTO-P-2014-0064]
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 12-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, 2015, to better
gauge whether the Extended Missing Parts Program offers sufficient benefits
to the patent community for it to be made permanent. The requirements of
the program have not changed.
DATES: Duration: The Extended Missing Parts Pilot Program will run through
December 31, 2015. Therefore, any certification and request to participate
in the Extended Missing Parts Pilot Program must be filed before December
31, 2015. 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: On December 8, 2010, after considering written
comments from the public, the USPTO changed the missing parts examination
procedures in certain nonprovisional applications by implementing a pilot
program (i.e., Extended Missing Parts Pilot Program). 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 has previously extended the Extended
Missing Parts Pilot Program. See Extension of the Extended Missing Parts
Pilot Program, 76 FR 78246 (Dec. 16, 2011), 1374 Off. Gaz. Pat. Office 113
(Jan. 10, 2012); Extension of the Extended Missing Parts Pilot Program, 78
FR 2256 (Jan. 10, 2013), 1387 Off. Gaz. Pat. Office 46 (Feb. 5, 2013);
Extension of Extended Missing Parts Pilot Program, 79 FR 642 (Jan. 6,
2014), 1398 Off. Gaz. Pat. Office 197 (Jan. 28, 2014).
The USPTO is further extending the Extended Missing Parts Pilot Program
until December 31, 2015. The USPTO may further extend the Extended Missing
Parts Pilot Program, or may discontinue the pilot program after December
31, 2015, depending on the results of the program. The requirements of the
program, which have not been modified, are reiterated below. Applicants are
 Top of Notices (239) December 29, 2015 |
US PATENT AND TRADEMARK OFFICE |
1421 CNOG 1553 |
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 12 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. Title II of the
Patent Law Treaties Implementation Act of 2012 (PLTIA) amended the
provisions of title 35, United States Code, including 35 U.S.C. 119(e),
to implement the Patent Law Treaty (PLT). See Public Law 112-211,
Sec. Sec. 20-203, 126 Stat. 1527, 1533-37 (2012). In the rulemaking to
implement the PLT and title II of the PLTIA, the Office provided that
an applicant may file a petition under 37 CFR 1.78(b) to restore the
benefit of a provisional application filed up to fourteen months
earlier. See Changes To Implement the Patent Law Treaty, 78 FR 62367,
62368-69 (Oct. 21, 2013) (final rule). Any petition to restore the
benefit of a provisional application must include the benefit claim,
the petition fee, and a statement that the delay in filing the
subsequent application was unintentional. This change was effective on
December 18, 2013, and applies to any application filed before, on, or
after December 18, 2013. However, if a petition under 37 CFR 1.78(b) to
restore the benefit claim of a prior provisional application is
required, the application is not eligible for participation in the
Extended Missing Parts Pilot Program.
I. Requirements
In order for an applicant to be provided a 12-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) The 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 12 months, and 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)(3)); and (4) the applicant must not have filed a
nonpublication request.
As required for all nonprovisional applications, the applicant will need
to satisfy filing date requirements and publication requirements. In the
rulemaking to implement the PLT and title II of the PLTIA, the Office
provided that an application (other than an application for a design
patent) filed on or after December 18, 2013, is not required to include a
claim to be entitled to a filing date. See Changes To Implement the Patent
Law Treaty, 78 FR 62367, 62638 (Oct. 21, 2013) (final rule). This change
was effective on December 18, 2013, and applies to any application filed
under 35 U.S.C. 111 on or after December 18, 2013. However, if an
application is filed without any claims, the Office of Patent Application
Processing will issue a notice giving the applicant a two-month
(extendable) time period within which to submit at least one claim in order
to avoid abandonment (see 37 CFR 1.53(f)). The Extended Missing Parts Pilot
Program does not change this time period. In accordance with 35 U.S.C.
122(b), the USPTO will publish the application promptly after the
expiration of 18 months from the earliest filing date for 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
| Top of Notices (239) December 29, 2015 |
US PATENT AND TRADEMARK OFFICE |
1421 CNOG 1554 |
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, the 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, the 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/patents/ebc/index.jsp.
The utility application including the certification and request to
participate in the pilot program may also be hand-carried to the USPTO or
filed by mail, for example, by Priority Mail Express[supreg] in accordance
with 37 CFR 1.10. 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, Sec. 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 12-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, the 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 the applicant satisfies the requirements (discussed above) on filing
of the nonprovisional application and the application is in condition for
publication, the USPTO will send the applicant a Notice to File Missing
Parts of Nonprovisional Application that sets a 12-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 12-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 12-month time period and the nonprovisional application is completed,
the nonprovisional application will be placed in the examination queue
| Top of Notices (239) December 29, 2015 |
US PATENT AND TRADEMARK OFFICE |
1421 CNOG 1555 |
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) and 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 the rulemaking to implement the PLT and title II of the PLTIA, the
Office provided that, in order to be accorded a filing date, a
nonprovisional application (other than an application for a design patent)
must include a specification with or without claims. See Changes To
Implement the Patent Law Treaty, 78 FR 62367, 62369 (Oct. 21, 2013) (final
rule). This change was effective on December 18, 2013, and applies to any
application filed under 35 U.S.C. 111 on or after December 18, 2013.
Although a claim is not required in a nonprovisional application (other
than an application for a design patent) for filing date purposes and the
applicant may file an amendment adding additional claims as prescribed by
35 U.S.C. 112 and drawings as prescribed by 35 U.S.C. 113 later during
prosecution, the applicant should consider the benefits of submitting a
complete set of claims and any necessary drawings on filing of the
nonprovisional application. This would reduce the likelihood that any
claims and/or drawings 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 12-month priority period provided by the Paris Convention
for the Protection of Industrial Property (Paris Convention). Accordingly,
any foreign filings must, in most cases, still be made within 12 months of
the filing date of the provisional application if the applicant wishes to
rely on the provisional application in the foreign-filed application or if
protection is desired in a country requiring filing within 12 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 7, 2015 MICHELLE K. LEE
Deputy Under Secretary of Commerce for Intellectual Property and
Deputy Director of the United States Patent and Trademark Office
[1412 OG 211]