Patent Baristas

The United States Patent and Trademark Office (USPTO) 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.

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 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.

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, applicants have to 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, applicants will need to submit these items within a two-month (extendable) time period.

The Extended Missing Parts Pilot Program should benefit the USPTO and the public 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.

Requirements:

In order for an applicant to get a twelve- month (non-extendable) time period to pay the search and examination fees and any required excess claims fees under the Extended Missing Parts Pilot Program, the applicant must:

(1) submit a certification and request to participate in the Extended Missing Parts Pilot Program with the nonprovisional application on filing;

(2) the application must be an original 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 twelve months; the specific reference to the provisional application must be in the first sentence(s) of the specification following the title or in an application data sheet under 37 CFR 1.76 (see 37 CFR 1.78(a)(5)); and

(4) applicant must not have filed a nonpublication request.

See the entire notice here.