(243) DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
[Docket No.: PTO-P-2015-0079]
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, 2016, to allow for the USPTO to seek
public comment, via a subsequent notice to be published in the middle
of 2016, on 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, 2016. Therefore, any certification and request to
participate in the Extended Missing Parts Pilot Program must be filed
on or before December 31, 2016. 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 announced extensions of the Extended Missing Parts Pilot
Program through notices published in the Federal Register. 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); Extension of Extended
Missing Parts Pilot Progam, 80 FR 1624 (Jan. 13, 2015), 1412 Off. Gaz.
Pat. Office 211 (Mar. 24, 2015). The program is currently set to expire
on December 31, 2015.
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Through this notice, the USPTO is further extending the Extended
Missing Parts Pilot Program until December 31, 2016. The USPTO may
further extend the Extended Missing Parts Pilot Program, or may
discontinue the pilot program after December 31, 2016, depending on the
results of the program. The requirements of the program, which have not
been modified, 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 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,
§§ 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 nonprovisional application is
filed outside the 12 month period from the date on which the corresponding
provisional application was filed, the nonprovisional application is
not eligible for participation in the Extended Missing Parts Pilot
Program, even though the applicant may be able to restore the benefit of
the provisional application by submitting a petition under 37 CFR 1.78(b).
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
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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 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/sites/default/files/forms/aia0421.pdf. Information
regarding EFS-Web is available on the USPTO Web site at
http://www.uspto.gov/patents-application-process/applying-online/about-efs-
web.
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® 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,
§ 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-application-process/checking-application-
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status/e-office-action-program. 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 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).
December 18, 2015 MICHELLE K. LEE
Under Secretary of Commerce for Intellectual Property and
Director of the United States Patent and Trademark Office
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