Extension of the Extended Missing Parts Pilot Program, 1243-1245 [2018-00270]
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Federal Register / Vol. 83, No. 7 / Wednesday, January 10, 2018 / Notices
(b) The accuracy of the agency’s
estimate of the burden (including hours
and cost) of the proposed collection of
information;
(c) Ways to enhance the quality,
utility, and clarity of the information to
be collected; and
(d) Ways to minimize the burden of
the collection of information on
respondents, e.g., the use of automated
collection techniques or other forms of
information technology.
Marcie Lovett,
Records and Information Governance
Division Director, OCTO, United States Patent
and Trademark Office.
[FR Doc. 2018–00265 Filed 1–9–18; 8:45 am]
BILLING CODE 3510–16–P
DEPARTMENT OF COMMERCE
United States Patent and Trademark
Office
[Docket No.: PTO–P–2017–0052]
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
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
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SUMMARY:
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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
Missing Parts Pilot Program. See Pilot
PO 00000
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1243
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 12month 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,
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Federal Register / Vol. 83, No. 7 / Wednesday, January 10, 2018 / Notices
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 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
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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 https://
www.uspto.gov/sites/default/files/
forms/aia0421.pdf. Information
regarding EFS-Web is available on the
USPTO website at https://
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
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
PO 00000
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(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 https://
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
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
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Federal Register / Vol. 83, No. 7 / Wednesday, January 10, 2018 / Notices
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 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).
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Dated: 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.
[FR Doc. 2018–00270 Filed 1–9–18; 8:45 am]
BILLING CODE 3510–16–P
DEPARTMENT OF COMMERCE
United States Patent and Trademark
Office
Fastener Quality Act Insignia Recordal
Process
Proposed extension of an
existing information collection;
comment request.
ACTION:
The United States Patent and
Trademark Office (USPTO), as required
by the Paperwork Reduction Act of
1995, invites comments on a proposed
extension of an existing information
collection: 0651–0028 (Fastener Quality
Act Insignia Recordal Act).
DATES: Written comments must be
submitted on or before March 12, 2018.
ADDRESSES: You may submit comments
by any of the following methods:
• Email: InformationCollection@
upsto.gov. Include ‘‘0651–0028
comment’’ in the subject line of the
message.
• Federal Rulemaking Portal: https://
www.regulations.gov.
• Mail: Marcie Lovett, Records and
Information Governance Division
Director, Office of the Chief Technology
Officer, United States Patent and
Trademark Office, P.O. Box 1450,
Alexandria, VA 22313–1450.
FOR FURTHER INFORMATION CONTACT:
Requests for additional information
should be directed to Catherine Cain,
Attorney Advisor, Office of the
Commissioner for Trademarks, United
States Patent and Trademark Office,
P.O. Box 1450, Alexandria, VA 22313–
1450; by telephone at 571–272–8946; or
by email to Catherine.Cain@uspto.gov
with ‘‘0651–0028 comment’’ in the
subject line. Additional information
about this collection is also available at
https://www.reginfor.gov under
‘‘Information Collection Review.’’
SUPPLEMENTARY INFORMATION:
SUMMARY:
I. Abstract
Under Section 5 of the Fastener
Quality Act (FQA) of 1999, 15 U.S.C.
5401 et seq., certain industrial fasteners
must bear an insignia identifying the
manufacturer. It is also mandatory for
manufacturers of fasteners covered by
PO 00000
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1245
the FQA to submit an application to the
USPTO for recordal of the insignia on
the Fastener Insignia Register.
The procedures for the recordal of
fastener insignia under the FQA are set
forth in 15 CFR 280.300 et seq. The
purpose of requiring both the insignia
and the recordation is to ensure that
certain fasteners can be traced to their
manufacturers and to protect against the
sale of mismarked, misrepresented, or
counterfeit fasteners.
The insignia may be sourced from an
existing trademark registered at USPTO,
from a trademark that is proposed in an
application to obtain a registration
currently before the USPTO, or from a
unique alphanumeric designation
issued upon request from the USPTO.
After a manufacturer submits a
complete application for recordal, the
USPTO issues a Certificate of Recordal.
These certificates remain active for five
years. Applications to renew the
certificates must be filed within six
months of the expiration date or, upon
payment of an additional surcharge,
within six months following the
expiration date.
If a recorded alphanumeric
designation is assigned by the
manufacturer to a new owner, the
designation becomes ‘‘inactive’’ and the
new owner must submit an application
to reactivate the designation within six
months of the date of assignment. If the
recordal is based on a trademark
application or registration and the
registration is assigned to a new owner,
the recordal becomes ‘‘inactive’’ and
cannot be reassigned. Instead, the new
owner of the trademark application or
registration must apply for a new
recordal. Manufacturers who record
insignia must notify the USPTO of any
changes of address.
This information collection includes
one form, the Application for Recordal
of Insignia or Renewal/Reactivation of
Recordal Under the Fastener Quality
Act (PTO–1611), which provides
manufacturers with a convenient way to
submit a request for the recordal of a
fastener insignia or to renew or
reactivate an existing Certificate of
Renewal.
The public uses this information
collection to comply with the insignia
recordal provisions of the FQA. The
USPTO uses the information in this
collection to record or renew insignias
under the FQA and to maintain the
Fastener Insignia Register, which is
open for public inspection and is
updated quarterly. The public may
download the Fastener Insignia Register
from the USPTO website.
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]]>Agencies
[Federal Register Volume 83, Number 7 (Wednesday, January 10, 2018)]
[Notices]
[Pages 1243-1245]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2018-00270]
-----------------------------------------------------------------------
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 [email protected]. 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 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, Sec. Sec. 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,
[[Page 1244]]
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
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 https://www.uspto.gov/sites/default/files/forms/aia0421.pdf. Information regarding EFS-Web is available on
the USPTO website at https://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 https://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).
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
[[Page 1245]]
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).
Dated: 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.
[FR Doc. 2018-00270 Filed 1-9-18; 8:45 am]
BILLING CODE 3510-16-P
