Patent and Trademark Office April 2, 2010 – Federal Register Recent Federal Regulation Documents

The United States Patent and Trademark Office (USPTO), in response to a number of requests to reduce the costs due one year after filing a provisional application, is considering a change that would effectively provide a 12-month extension to the 12-month provisional application period (creating a net 24-month period). This change would be implemented through the missing parts practice in nonprovisional applications. Currently the missing parts practice permits an applicant on payment of a surcharge to pay the up-front filing fees and submit an executed oath or declaration after the filing of a nonprovisional application within a two-month time period set by the USPTO that is extendable on payment of extension of time fees for an additional five months. Under the proposal, applicants would be permitted to file a nonprovisional application with at least one claim within the 12-month statutory period after the provisional application was filed, pay the basic filing fee, and submit an executed oath or declaration. In addition, the nonprovisional application would need to be in condition for publication and applicant would not be able to file a nonpublication request. Applicants would be given a 12-month period to decide whether the nonprovisional application should be completed by paying the required surcharge and the search, examination and any excess claim fees due within that 12-month period. The proposal would benefit 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 proposal would benefit 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 the applicants have decided not to pursue examination. Importantly, the extended missing parts period would not affect the 12-month priority period provided by the Paris Convention for the Protection of Industrial Property and, thus, any foreign filings would still need to be made within 12 months of the filing date of the provisional application if applicant wishes to rely on the provisional application in the foreign- filed application.