Extension of the Extended Missing Parts Pilot Program, 80325-80327 [2015-32469]

Download as PDF Federal Register / Vol. 80, No. 247 / Thursday, December 24, 2015 / Notices state port-side monitoring data to monitor the River herring/Shad catch caps. They will review options for the Atlantic herring fishery in the Omnibus Industry-Funded Monitoring Amendment. They will also discuss 5year research priorities for Atlantic herring (2017–2022). The panel will also review a future action to consider revising the haddock catch cap accountability measure. They will also discuss other business as necessary. Although non-emergency issues not contained in this agenda may come before this group for discussion, those issues may not be the subject of formal action during this meeting. Action will be restricted to those issues specifically listed in this notice and any issues arising after publication of this notice that require emergency action under section 305(c) of the Magnuson-Stevens Act, provided the public has been notified of the Council’s intent to take final action to address the emergency. Special Accommodations This meeting is physically accessible to people with disabilities. Requests for sign language interpretation or other auxiliary aids should be directed to Thomas A. Nies, Executive Director, at (978) 465–0492, at least 5 days prior to the meeting date. Authority: 16 U.S.C. 1801 et seq. Dated: December 21, 2015. Tracey L. Thompson, Acting Deputy Director, Office of Sustainable Fisheries, National Marine Fisheries Service. [FR Doc. 2015–32432 Filed 12–23–15; 8:45 am] BILLING CODE 3510–22–P DEPARTMENT OF COMMERCE United States Patent and Trademark Office [Docket No.: PTO–P–2015–0079] Extension of the Extended Missing Parts Pilot Program United States Patent and Trademark Office, Commerce. ACTION: Notice. AGENCY: 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 mstockstill on DSK4VPTVN1PROD with NOTICES SUMMARY: VerDate Sep<11>2014 17:57 Dec 23, 2015 Jkt 238001 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 PO 00000 Frm 00014 Fmt 4703 Sfmt 4703 80325 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. 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 E:\FR\FM\24DEN1.SGM 24DEN1 mstockstill on DSK4VPTVN1PROD with NOTICES 80326 Federal Register / Vol. 80, No. 247 / Thursday, December 24, 2015 / Notices 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 VerDate Sep<11>2014 17:57 Dec 23, 2015 Jkt 238001 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 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-applicationprocess/applying-online/about-efs-web. The utility application including the certification and request to participate in the pilot program may also be handcarried 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 PO 00000 Frm 00015 Fmt 4703 Sfmt 4703 application that is not filed by EFS-Web. See Public Law 112–29, § 10(h), 125 Stat. 283, 319 (2011). This nonelectronic filing fee is due on filing of the utility application or within the twomonth (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 eOffice Action program, see Electronic Office Action, 1343 Off. Gaz. Pat. Office 45 (June 2, 2009), and http:// www.uspto.gov/patents-applicationprocess/checking-application-status/eoffice-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 E:\FR\FM\24DEN1.SGM 24DEN1 mstockstill on DSK4VPTVN1PROD with NOTICES Federal Register / Vol. 80, No. 247 / Thursday, December 24, 2015 / Notices 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 VerDate Sep<11>2014 17:57 Dec 23, 2015 Jkt 238001 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 foreignfiled 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). Dated: December 18, 2015. Michelle K. Lee, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office. [FR Doc. 2015–32469 Filed 12–23–15; 8:45 am] BILLING CODE 3510–16–P COMMODITY FUTURES TRADING COMMISSION Agency Information Collection Activities: Proposed Collection Revision, Comment Request: Final Rule for Records of Commodity Interest and Related Cash or Forward Transactions Commodity Futures Trading Commission. ACTION: Notice. AGENCY: The Commodity Futures Trading Commission (‘‘CFTC’’ or the ‘‘Commission’’) is announcing an opportunity for public comment on the proposed revision to the collection of certain information by the Commission. Under the Paperwork Reduction Act (‘‘PRA’’), Federal agencies are required to publish notice in the Federal Register concerning each proposed collection of information and to allow 60 days for public comment. The Commission recently adopted a final rule that amends the Commission Regulation dealing with records of commodity interest and related cash or forward transactions (the ‘‘Final Rule’’). The Final Rule modifies some of the recordkeeping requirements that apply to certain participants in the markets regulated by the Commission. This notice solicits additional comments on the PRA implications of the amended recordkeeping requirements that are set forth in the Final Rule, including comments that address the burdens associated with the modified SUMMARY: PO 00000 Frm 00016 Fmt 4703 Sfmt 4703 80327 information collection requirements of the Final Rule. DATES: Comments must be submitted on or before February 22, 2016. ADDRESSES: You may submit comments, identified by ‘‘OMB Control No. 3038– 0090; Records of Commodity Interest and Related Cash or Forward Transactions Collection,’’ by any of the following methods: • The Commission’s Web site, via its Comments Online process at http:// comments.cftc.gov/. Follow the instructions for submitting comments through the Web site. • Mail: Christopher Kirkpatrick, Secretary of the Commission, Commodity Futures Trading Commission, Three Lafayette Centre, 1155 21st Street NW., Washington, DC 20581. • Hand Delivery/Courier: Same as Mail above. • Federal eRulemaking Portal: http:// www.regulations.gov/. Follow the instructions for submitting comments through the Portal. Please submit your comments using only one method. All comments must be submitted in English, or if not, accompanied by an English translation. Comments will be posted as received to http:// www.cftc.gov. FOR FURTHER INFORMATION CONTACT: Katherine Driscoll, Associate Chief Counsel, (202) 418–5544, kdriscoll@ cftc.gov; August A. Imholtz III, Special Counsel, (202) 418–5140, aimholtz@ cftc.gov; or Lauren Bennett, Special Counsel, (202) 418–5290, lbennett@ cftc.gov, Division of Swap Dealer and Intermediary Oversight, Commodity Futures Trading Commission, 1155 21st Street NW., Washington, DC 20581. SUPPLEMENTARY INFORMATION: The Final Rule amends Regulation 1.35(a). The collections of information related to Regulation 1.35(a) have been previously reviewed and approved by OMB in accordance with the PRA 1 and assigned OMB Control Number 3038–0090. Section 3506(c)(2)(A) of the PRA, 44 U.S.C. 3506(c)(2)(A), requires Federal agencies to provide a 60-day notice in the Federal Register concerning each proposed collection of information before submitting the collection to OMB for approval. To comply with this requirement, the CFTC is publishing notice of the proposed revision to the collection of information listed below. Title: Adaption of Regulations to Incorporate Swaps—Records of Transactions (OMB Control No. 3038– 0090). This is a request for an extension 1 44 E:\FR\FM\24DEN1.SGM U.S.C. 3501 et seq. 24DEN1

Agencies

[Federal Register Volume 80, Number 247 (Thursday, December 24, 2015)]
[Notices]
[Pages 80325-80327]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2015-32469]


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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.
    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, 
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 nonprovisional application is 
filed

[[Page 80326]]

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 
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[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-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

[[Page 80327]]

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).

    Dated: December 18, 2015.
Michelle K. Lee,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2015-32469 Filed 12-23-15; 8:45 am]
 BILLING CODE 3510-16-P