83 FR 1243 - Extension of the Extended Missing Parts Pilot Program

DEPARTMENT OF COMMERCE
United States Patent and Trademark Office

Federal Register Volume 83, Issue 7 (January 10, 2018)

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.

[Federal Register Volume 83, Number 7 (Wednesday, January 10, 2018)]
[Notices]
[Pages 1243-1245]
From the Federal Register Online  [www.thefederalregister.org]
[FR Doc No: 2018-00270]


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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.

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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 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).
    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]
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