April's advice article

Extended Missing Parts Pilot Program Renewed for 2014

Are you looking for a way to increase your options and maximize your resources as you protect your invention? This pilot program might be for you.

The Provisional Application for Patent is a powerful tool that allows independent inventors to claim a priority date for their invention. This gives inventors 12 months before they must file a corresponding nonprovisional application-valuable time to test the marketplace, gather investors, or take other important steps toward commercialization. The cost to claim this priority date through a provisional patent application is highly affordable: $130 for small entities and just $65 for micro entities. Nevertheless, some applicants might need more than 12 months. What then?

The United States Patent and Trademark Office (USPTO) launched the Extended Missing Parts Pilot Program in December 2010 to make provisional patent applications even more beneficial to inventors. This pilot program permits an applicant to request an additional 12-month period that effectively gives applicants up to 24 months to consider the significant investment of time and money needed to move forward with prosecution of a nonprovisional application. It was created by the USPTO following feedback from independent inventors and universities.

Both utility and plant patent applications are eligible to participate. The Extended Missing Parts Pilot Program has been renewed regularly and the current renewal runs until December 31, 2014.

Here's how it works: an applicant files a nonprovisional application no later than 12 months after the filing date of a corresponding provisional application and requests a delay in payment of the search and examination fees using form PTO/AIA/421. The applicant must claim the benefit of the provisional application filing date in an Application Data Sheet. The nonprovisional application may be filed online via EFS-Web or in paper, but applicants filing by paper should be aware they will need to pay an additional non-electronic filing fee (currently $200 for both small and micro entities). The applicant will receive an additional 12 months to pay the search and examination fees for their nonprovisional application and move forward with prosecution. Only newly filed nonprovisional applications directly claiming benefit of an earlier filed provisional application within the previous 12 months are eligible.

Nonprovisional applications for which a 12-month extension is requested must have a written description clearly describing the invention so that someone with ordinary skill in the same technology can make and use it. The nonprovisional application must have at least one claim and, when necessary, drawings to understand the invention. (Drawings are necessary to understand practically all inventions.) The applicant must still pay the basic filing fee for a nonprovisional application at the time of filing (but not the search and examination fees). Currently, the basic filing fee for small and micro entities when filing a utility application via EFS-Web is $70. Visit the fee schedule for a complete list of USPTO fees.

A nonpublication request cannot be submitted with the nonprovisional application. If the application is not in condition for publication, the applicant will be required to place the application in condition for publication within a two-month time period.

In order to participate in the Extended Missing Parts Pilot Program, follow these steps:

  • File a nonprovisional application (including a specification) via EFS-Web or paper
  • Claim the benefit of the filing date of a corresponding provisional application filed within the previous 12 months in an Application Data Sheet (e.g. PTO/AIA/14, Domestic Benefit Information section) included when you file
  • Include at least one claim
  • Include drawings, if necessary
  • Request a delay in payment of the search and examination fees at the time of the non-provisional application filing using form PTO/AIA/421

As always, independent inventors can contact the Inventors Assistance Center at 800-786-9199 or email independentinventor@uspto.gov with any questions.

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The USPTO gives you useful information and non-legal advice in the areas of patents and trademarks. The patent and trademark statutes and regulations should be consulted before attempting to apply for a patent or register a trademark. These laws and the application process can be complicated. If you have intellectual property that could be patented or registered as a trademark, the use of an attorney or agent who is qualified to represent you in the USPTO is advised.