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(308) DEPARTMENT OF COMMERCE
Patent and Trademark Office
[Docket No. PTO-P-2013-0061]
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, 2014, 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, 2014. Therefore, any certification and request to
participate in the Extended Missing Parts Pilot Program must be filed
before December 31, 2014. 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, 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 has twice 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), and Extension of the Extended Missing Parts Pilot Program,
78 FR 2256 (Jan. 10, 2013), 1387 Off. Gaz. Pat. Office 46 (Feb. 5, 2013).
The USPTO is further extending the Extended Missing Parts Pilot Program
until December 31, 2014. The USPTO may further extend the Extended Missing
Parts Pilot Program, or may discontinue the pilot program after
December 31, 2014, 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
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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 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) amends the provisions of title
35, United States Code, to implement the Patent Law Treaty (PLT). See
Public Law 112-211, sections 20 through 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 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 is effective December 18, 2013, and applies to
any application filed before, on, or after December 18, 2013. However, if
a petition 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 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)(3)); 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 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 is
effective 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
(OPAP) 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
eighteen 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
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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 hand-carried to the USPTO or
filed by mail, for example, by "Express Mail" (now "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 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 beplaced 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
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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 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 is effective 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 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, 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 twelve-month priority period provided by the Paris
Convention for the Protection of Industrial Property (Paris
Convention). Accordingly, 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 eply 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 31, 2013 MARGARET A. FOCARINO
Commissioner for Patents
Performing the functions and duties of the
Under Secretary of Commerce for
Intellectual Property and Director of the
United States Patent and Trademark Office
[1398 OG 197]