USPTO Extends Missing Parts Pilot Program Again

by McDonnell Boehnen Hulbert & Berghoff LLP

USPTO SealIn a Federal Register notice published earlier today (78 Fed. Reg. 2256), the U.S. Patent and Trademark Office announced that the Extended Missing Parts Pilot Program that was implemented two years ago would be extended for another year.  The pilot program allows applicants to request a twelve-month extension to pay the search fee, examination fee, any excess claim fees, and surcharge for late submission of the search and examination fees in a nonprovisional application.  The notice indicates that the pilot program benefits applicants by providing additional time to determine if patent protection should be sought and focus on commercialization efforts, benefits the public by adding publications to the prior art, and benefits the Office by removing nonprovisional applications that applicants decline to pursue from its workload.  The pilot program has been extended through December 31, 2013.

In December 2010, the Office implemented the Extended Missing Parts Pilot Program, noting that it would "effectively provide a 12-month extension to the existing 12-month provisional application period, providing applicants additional time to find financial help, evaluate a product's worth in the marketplace or further develop the invention for commercialization" (see "USPTO Implements Pilot Program Extending Provisional Application Period").  The Office initially sought comments regarding the program in April 2010 (see "USPTO Seeks to Effectively Double Provisional Application Period").  Under the pilot program, the Office modified its missing parts practice -- which permits an applicant to pay the filing fees and submit an executed oath or declaration after the filing of a nonprovisional application within a two-month time period that is extendable for an additional five months on payment of extension of time fees -- such that applicants would file a nonprovisional application with at least one claim within the 12-month statutory period after the provisional application was filed (as well as pay the basic filing fee, submit an executed oath or declaration, and not file a nonpublication request) and then be given a 12-month period within which to decide whether the nonprovisional application should be completed by paying the required surcharge and the search, examination, and any excess claim fees.

Applicants wishing to participate in the pilot program must satisfy the following requirements:

(1) submit a certification and request to participate in the program at the time of filing of a nonprovisional application (preferably using Form PTO/AIA/421);
(2) the application must be an original (not reissue) nonprovisional utility or plant application filed under 35 U.S.C. 111(a);
(3) the nonprovisional application must directly claim the benefit under 35 U.S.C. § 119(e) and 37 C.F.R. § 1.78 of a prior provisional application filed within the previous twelve months, with the specific reference to the provisional application being made in an application data sheet; and
(4) the applicant must not have filed a nonpublication request.

The pilot program was first extended in December 2011 (see "USPTO's Extended Missing Parts Pilot Program Is Extended").  In today's notice regarding the extension of the pilot program, the Office:

[C]autions 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 twelve 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.

The form for requesting participation in the program (PTO/AIA/421) also outlines the PTA effects of participation in the program, stating that:

Any patent term adjustment (PTA) accrued by applicant based on certain administrative delays by the USPTO is offset by a reduction for failing to reply to a notice by the USPTO within three months.  See 37 CFR 1.704(b).  Thus, if applicant replies to a notice to file missing parts more than three months after the mailing date of the notice, the additional time that applicant takes to reply to the notice will be treated as an offset to any positive PTA accrued by the applicant.

In addition, under the pilot program, nonprovisional applications are still published according to the existing eighteen-month publication provisions.  More importantly, the Office "advises" that:

[T]he extended missing parts period does not affect the twelve-month priority period provided by the Paris Convention for the Protection of Industrial Property (Paris Convention).  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.

Perhaps in a nod to the first-inventor-to-file (FITF) provisions of the Leahy-Smith America Invents Act -- and in particular to AIA § 3(n), which applies the FITF provisions to any application filed on or after March 16, 2013 that contains or contained at any time a claim having an effective filing date that is on or after March 16, 2013 -- the Office's most recent notice states that:

While only one claim is required in a nonprovisional application for filing date purposes and applicant may file an amendment adding additional claims later during prosecution, applicant should consider the benefits of submitting a complete set of claims on filing of the nonprovisional application.  This would reduce the likelihood that any claims added later during prosecution might be found to contain new matter.

Where an applicant participating in the program fails to pay the basic filing fee, provide an executed oath or declaration, or submit application papers that are in condition for publication -- i.e., comply with the requirements for participation in the program (which are essentially the requirements for publication of the application) -- the applicant is given a two-month (extendable) time period within which to supply those items.  In the notice regarding the second extension of the pilot program, the Office notes that applications that are not filed electronically will still be assessed a $400 additional fee (or $200 for small entities) pursuant to the AIA, that this fee will be due within the two-month (extendable) time period to reply to the Notice to File Missing Parts of Nonprovisional Application, and that applicants will not be given the 12-month time period under the pilot program to pay this fee.


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McDonnell Boehnen Hulbert & Berghoff LLP

McDonnell Boehnen Hulbert & Berghoff LLP on:

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