[Federal Register Volume 79, Number 3 (Monday, January 6, 2014)]
[Notices]
[Pages 642-644]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2013-31574]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
[Docket No. PTO-P-2013-0061]
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 twelve-
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
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 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 December 31, 2014, to better gauge
whether the Extended Missing Parts Program offers sufficient benefits
to the patent community for it to be made permanent.
DATES: Duration: The Extended Missing Parts Pilot Program will run
through December 31, 2014. Therefore, any certification and request to
participate in the Extended Missing Parts Pilot Program must be filed
before December 31, 2014. The USPTO may further extend the pilot
program (with or without modifications) depending on the feedback
received and the continued effectiveness of the pilot program.
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 by mail 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.
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].
SUPPLEMENTARY INFORMATION: On December 8, 2010, the USPTO implemented a
change to missing parts practice in certain nonprovisional applications
as a pilot program (i.e., Extended Missing Parts Pilot Program) after
considering written comments from the public. 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 has twice extended the
Extended Missing Parts Pilot Program. See Extension of the Extended
Missing Parts Pilot Program, 76 FR 78246 (Dec. 16, 2011), 1374 Off.
Gaz. Pat. Office 113 (Jan. 10, 2012), and Extension of the Extended
Missing Parts Pilot Program, 78 FR 2256 (Jan. 10, 2013), 1387 Off. Gaz.
Pat. Office 46 (Feb. 5, 2013).
The USPTO is further extending the Extended Missing Parts Pilot
Program until December 31, 2014. The USPTO may further extend the
Extended Missing Parts Pilot Program, or may discontinue the pilot
program after December 31, 2014, depending on the results of the
program. The requirements of the program, which have not been modified,
are reiterated below. Applicants are strongly cautioned to review the
pilot program requirements before making a request to participate in
the Extended Missing Parts Pilot Program.
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.
Title II of the Patent Law Treaties Implementation Act of 2012 (PLTIA)
amends the provisions of title 35, United States Code, to implement the
Patent Law Treaty (PLT). See Public
[[Page 643]]
Law 112-211, sections 20 through 203, 126 Stat. 1527, 1533-37 (2012).
In the rulemaking to implement the PLT and title II of the PLTIA, the
Office provided that an applicant may file a petition 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 is effective
December 18, 2013, and applies to any application filed before, on, or
after December 18, 2013. However, if a petition to restore the benefit
claim of a prior provisional application is required, the application
is not eligible for participation in the Extended Missing Parts Pilot
Program.
I. Requirements: In order for an applicant to be provided a twelve-
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) 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 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 twelve months; 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) applicant must not have filed
a nonpublication request.
As required for all nonprovisional applications, 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
Office 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 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 is effective 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 (OPAP) 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 eighteen
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,
applicant will need to satisfy the publication requirements within a
two-month extendable time period.
As noted above, applicants should request participation in the
Extended Missing Parts Pilot Program by using Form PTO/AIA/421. For
utility patent applications, 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 Web site at http://www.uspto.gov/forms/aia0421.pdf. Information regarding EFS-Web is available on the USPTO
Web site at http://www.uspto.gov/ebc/index.jsp.
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 ``Express Mail'' (now ``Priority Mail
Express'') 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, Sec. 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 twelve-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, applicant must file the application
including the certification and request to participate in the pilot
program by mail or hand-carried 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 applicant satisfies the requirements
(discussed above) on filing of the nonprovisional application and the
application is in condition for publication, the USPTO will send
applicant a Notice to File Missing Parts of Nonprovisional Application
that sets a twelve-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 twelve-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/process/status/e-Office_Action.jsp. After an
applicant files a timely reply to the Notice to File Missing Parts
within the twelve-month time period and the nonprovisional application
is completed, the nonprovisional application will be
[[Page 644]]
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)
which 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 implement the PLT and title II of
the PLTIA, the Office 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 is effective 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 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, 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 twelve-month priority period provided by the Paris
Convention for the Protection of Industrial Property (Paris
Convention). Accordingly, 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.
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: December 31, 2013.
Margaret A. Focarino,
Commissioner for Patents, 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. 2013-31574 Filed 1-3-14; 8:45 am]
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