Patent and Trademark Office December 8, 2010 – Federal Register Recent Federal Regulation Documents

The United States Patent and Trademark Office (USPTO) previously published a notice requesting comments on a proposed change to missing parts practice in nonprovisional applications. The USPTO has considered the comments and is implementing a pilot program (Extended Missing Parts Pilot Program) in which an applicant can request a twelve-month time period to pay certain fees and to reply to a Notice to File Missing Parts of Nonprovisional Application. Under the Extended Missing Parts Pilot Program, applicant must file a nonprovisional application within twelve months of the filing date of a provisional application and directly claim the benefit of the provisional application, as well as submit a certification and request to participate in the Extended Missing Parts Pilot Program with the nonprovisional application. In addition, applicant must not file a nonpublication request. Applicant will be given a twelve-month period to decide whether the nonprovisional application should be completed by paying the search fee, the examination fee, any excess claim fees, and the surcharge ($130.00 for non-small entity or $65.00 for small entity) for the late submission of the search fee and examination fee within that twelve-month period. The nonprovisional application will be published under the existing eighteen-month publication provisions. Therefore, applicant should also submit the basic filing fee, an executed oath or declaration, and application papers that are in condition for publication, on filing of the application with the request to participate in the pilot. If the basic filing fee, an executed oath declaration, and/or application papers that are in condition for publication are not submitted with the application and the request to participate in the pilot, applicant will need to submit these items within a two-month (extendable) time period. In view of the comments, the USPTO is cautiously moving forward by implementing the proposed procedure as a pilot program. Specifically, the pilot program will require applicant to submit a certification and request to participate in the pilot program, rather than automatically applying the procedure to all applicants. The USPTO is providing a certification and request form that includes educational information regarding domestic benefit claims, foreign filings, patent term adjustment (PTA) effects, the need for a complete disclosure of the invention, potential increase in fees, and the benefits of submitting a complete set of claims. In addition, the USPTO is implementing a number of educational initiatives to assist independent inventors and other applicants. The Extended Missing Parts Pilot Program will benefit applicants by permitting additional time to determine if patent protection should be soughtat a relatively low costand by permitting applicants to focus efforts on commercialization during this period. The Extended Missing Parts Pilot Program will 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 applicants later decide not to pursue examination. Applicants are advised that the extended missing parts period does not affect the twelve-month priority period provided by the Paris Convention for the Protection of Industrial Property. Thus, any foreign filings must still be made within twelve months of the filing date of the provisional application if applicant wishes to rely on the provisional application in the foreign-filed application or if protection is desired in a country requiring filing within twelve months of the earliest application for which rights are left outstanding in order to be entitled to priority.