(260) DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
[Docket No.: PTO-P-2017-0052]
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 providing 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 January 2, 2019, to allow
the USPTO to continue its evaluation of the pilot program. The requirements
of the program have not changed.
DATES: Duration: The Extended Missing Parts Pilot Program will run through
January 2, 2019. Therefore, any certification and request to participate in
the Extended Missing Parts Pilot Program must be filed on or before
January 2, 2019. In addition, any certification and request to participate
in the Extended Missing Parts Pilot Program filed between January 2, 2018,
and the publication date of this notice will be considered timely. The
USPTO intends to make a decision before January 2, 2019, on whether the
Extended Missing Parts Pilot Program offers sufficient benefits to the
patent community for it to be made permanent or whether the USPTO should
permit the program to expire.
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 Erin M.
Harriman, Senior Legal Advisor, Office of Patent Legal Administration,
Office of the Deputy Commissioner for Patent Examination Policy, by
telephone at (571) 272-7747.
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. Alternatively, mail may be 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.
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). Over the course of the pilot program, the USPTO
provided extensions of the Extended Missing Parts Pilot Program through
notices published in the Federal Register. The most recent notice extended
the program until January 2, 2018. See Extension of Extended Missing Parts
Pilot Program, 81 FR 93669 (Dec. 21, 2016), 1434 Off. Gaz. Pat. Office 187
(Jan. 17, 2017).
The requirements of the program, which have not been modified, are
reiterated below. Applicants are strongly advised to review the pilot
program requirements before making a request to participate in the Extended
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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 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 USPTO
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 USPTO
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 (as prescribed by 35 U.S.C. 112) 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 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
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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 use Form PTO/AIA/421 to request
participation in the Extended Missing Parts Pilot Program. 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 website at
http://www.uspto.gov/sites/default/files/forms/aia0421.pdf. Information
regarding EFS-Web is available on the USPTO website 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[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, 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-carry 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-
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).
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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 USPTO
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,
in most cases, any foreign filings must 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 5, 2018 JOSEPH D. MATAL
Associate Solicitor, performing the functions and duties of the
Under Secretary of Commerce for Intellectual Property and
Director of the United States Patent and Trademark Office
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