Federal Register / Vol. 75, No. 235 / Wednesday, December 8, 2010 / Notices 76401 

collection) and released. The data 

gathered from this project, in addition to 

Project 2, will provide information on 

the ecology of juvenile salmonids in 

estuarine environments, their feeding 

habits, and how they differ between 

systems with permanently-open 

(Tomales Bay) versus seasonally-closed 

(Pescadero Creek lagoon) estuaries/ 

lagoons. 

Project 4 examines smolt production 

in the Lagunitas Creek watershed by 

analyzing collected otoliths to 

determine where smolts that survived to 

breed as adults reared as juveniles. The 

otoliths will be obtained from carcasses 

encountered during annual spawner 

surveys conducted by the National Park 

Service and Marin Municipal Water 

District. Dr. Carlson proposes to conduct 

additional surveys in order to augment 

the otolith collection. The results of this 

project could provide important 

information on the habitat attributes 

associated with high productivity areas 

and could help identify areas of poor 

productivity that might be candidate 

sites for habitat restoration. 

Permit 15548 

Thomas R. Payne and Associates is 

seeking a ten-year permit to take listed 

adult and juvenile CCC steelhead while 

collecting biological data. The purpose 

of the research is to monitor the 

distribution, relative abundance and 

diversity, the condition and general 

health of fish populations and to 

describe the existing habitat conditions 

of Suisun Creek, Green Valley Creek, 

and Ledgewood Creek in Solano County 

and Napa County, California. The 

research would benefit CCC steelhead 

by producing data to support 

development of the Solano Habitat 

Conservation Plan under development 

as a requirement of a March 1999 

biological opinion for the Solano Project 

Water Service Contract Renewal issued 

by the U.S. Fish and Wildlife Service. 

Monitoring activities will take place 

between July and October at multiple 

sites in the three creeks using a 

backpack electrofisher to stun and net 

fish. Captured fish will be anesthetized 

prior to handling and then identified, 

counted, measured, weighed, and 

released. The researchers do not intend 

to kill any captured fish but a small 

number may die as an unintended result 

of the research activities. 

This notice is provided pursuant to 

section 10(c) of the ESA. NMFS will 

evaluate the applications, associated 

documents, and comments submitted to 

determine whether the applications 

meet the requirements of section 10(a) 

of the ESA and Federal regulations. The 

final permit decisions will not be made 

until after the end of the 30-day 

comment period. NMFS will publish 

notice of its final action in the Federal 

Register. 

Dated: December 2, 2010. 

Therese Conant, 

Acting Chief, Endangered Species Division, 

Office of Protected Resources, National 

Marine Fisheries Service. 

[FR Doc. 2010–30908 Filed 12–7–10; 8:45 am] 

BILLING CODE 3510–22–P 

DEPARTMENT OF COMMERCE 

Patent and Trademark Office 

[Docket No.: PTO–P–2010–0071] 

Pilot Program for Extended Time 

Period To Reply to a Notice To File 

Missing Parts of Nonprovisional 

Application 

AGENCY: United States Patent and 

Trademark Office, Commerce. 

ACTION: Notice. 

SUMMARY: 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 nonsmall entity or $65.00 for small entity) 

for the late submission of the search fee 

and examination fee within that twelvemonth 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 sought— 

at a relatively low cost—and 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. 

DATES: Effective Date: December 8, 2010. 

Duration: The Extended Missing Parts 

Pilot Program will run for twelve 

months from its effective date. 

Therefore, any certification and request 

to participate in the Extended Missing 

Parts Pilot Program must be filed before 

December 8, 2011. The USPTO may 

extend the pilot program (with or 


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76402 Federal Register / Vol. 75, No. 235 / Wednesday, December 8, 2010 / Notices 

without modifications) depending on 

the feedback received and the 

effectiveness of the pilot program. 

FOR FURTHER INFORMATION CONTACT: 

Eugenia A. Jones, Senior Legal Advisor, 

Office of Patent Legal Administration, 

Office of the Associate 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 

PatentPractice@uspto.gov. 

SUPPLEMENTARY INFORMATION: The 

USPTO published a notice requesting 

comments on a proposed change to 

missing parts practice in nonprovisional 

applications. See Request for Comments 

on Proposed Change to Missing Parts 

Practice, 75 FR 16750 (April 2, 2010), 

1353 Off. Gaz. Pat. Office 223 (April 27, 

2010). Specifically, the USPTO 

requested comments on whether the 

missing parts practice should be 

changed to provide applicants with an 

extended time period to reply to a 

Notice to File Missing Parts requiring 

fees in a nonprovisional application 

filed under 35 U.S.C. 111(a) that claims 

the benefit of a provisional application 

and meets certain conditions. The 

request for comments identified a 

number of potential benefits of such an 

extended time period to reply to a 

missing parts notice, including 

increased use of the eighteen-month 

publication system, more time for 

applicants to ascertain the value of their 

inventions and focus on 

commercialization efforts, and removal 

of applications from the USPTO’s 

workload. 

The USPTO received over forty 

comments from intellectual property 

organizations, universities, industry, a 

law firm, individual patent 

practitioners, and the general public. 

The USPTO acknowledges and 

appreciates the many comments that 

were submitted from the intellectual 

property community. The comments 

from those who will benefit from the 

extended time period were generally 

positive. Many comments expressed 

concerns over the potential for a loss of 

rights by some applicants, such as 

independent inventors. The USPTO has 

considered the written comments 

including those that raised concerns or 

provided suggestions. The USPTO is 

implementing a change to missing parts 

practice in nonprovisional applications 

as a pilot program (i.e., Extended 

Missing Parts Pilot Program). The pilot 

program will allow the USPTO to 

proceed with caution, while placing 

emphasis on awareness and education 

of the public regarding the program. The 

USPTO will also be better able to 

evaluate the effectiveness of the 

program and make modifications or 

eliminate the program as deemed 

appropriate. Furthermore, those 

applicants who do not wish to 

participate in the pilot program should 

not be affected by the pilot program and 

do not need to change their practices. 

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. 

Applicants who do not submit a request 

to participate in the pilot program will 

continue to receive a Notice to File 

Missing Parts of Nonprovisional 

Application that sets a two-month 

(extendable) time period to reply to the 

notice in an application that has been 

accorded a filing date but has items that 

are missing. 

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. 

It is noted that this notice merely 

describes agency policy and procedures, 

and does not involve substantive rule 

making. While the missing parts 

practice in nonprovisional applications 

is set forth to some extent in 37 CFR 

1.53(f), the rule does not set forth the 

specific time period that must be given 

in the notice to applicant that certain 

fees or an oath or declaration are 

required. 

I. Requirements: In order for an 

applicant to be provided a twelvemonth (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/SB/421 

entitled ‘‘Certification and Request for 

Extended Missing Parts Pilot Program’’; 

(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. 

As required for all nonprovisional 

applications, applicant will need to 

satisfy filing date requirements and 

publication requirements. 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 to 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) an executed oath 

or declaration in compliance with 37 

CFR 1.63; (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 petition under 

37 CFR 1.47 to be granted, 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 discussed in 

section II of this notice. 


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As noted above, applicants should 

request participation in the Extended 

Missing Parts Pilot Program by using 

Form PTO/SB/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/SB/421 will be available on the 

USPTO Web site at http:// 

www.uspto.gov/forms/index.jsp. 

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 filed 

by mail or hand-carried to the USPTO. 

For plant patent applications, applicant 

must file the application including the 

certification and request to participate 

in the pilot program by mail or handcarried 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). 

It is strongly recommended that any 

new applications submitted by mail be 

filed using the ‘‘Express Mail Post Office 

to Addressee service’’ of the United 

States Postal Service (USPS) in 

accordance with 37 CFR 1.10 in order 

for the application to be considered 

filed with the USPTO on the date of 

deposit with the USPS. If the ‘‘Express 

Mail’’ service of the USPS (in 

accordance with 37 CFR 1.10) is not 

utilized, then the new application can 

only be accorded the date of actual 

receipt in the USPTO (and there is no 

remedy for an application that is lost in 

the mail). New applications cannot be 

submitted by facsimile transmission 

and, if submitted by facsimile 

transmission, are not accorded a filing 

or receipt date and may be returned to 

applicant. See 37 CFR 1.6(d) and 

1.8(a)(2)(i)(A). 

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/eOffice_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 

placed in the examination queue based 

on the actual filing date of the 

nonprovisional application. 

A. Application Not in Condition for 

Publication: If the application papers 

need to be corrected in order for the 

application to be in condition for 

publication (such as the specification 

pages contain improper margins or line 

spacing, or the drawings are not 

acceptable because they are not 

electronically reproducible), or if the 

basic filing fee or an executed oath or 

declaration is not submitted on filing, 

and applicant has submitted a 

certification and request to participate 

in the pilot program, the USPTO will 

accept the certification and request but 

send a Notice to File Missing Parts of 

Nonprovisional Application that: (1) 

Sets a two-month (extendable) time 

period for applicant to correct the 

application papers and/or submit the 

basic filing fee or executed oath or 

declaration and surcharge (if 

appropriate), and (2) sets a twelvemonth (non-extendable) time period for 

applicant to submit the search fee, the 

examination fee, any excess claims fees, 

and the surcharge for the late filing of 

the search fee and examination fee (if 

appropriate). If the basic filing fee and/ 

or an executed oath or declaration is not 

submitted on filing, applicant will be 

required to pay the surcharge under 37 

CFR 1.16(f) for the late filing of the basic 

filing fee and/or executed oath or 

declaration within the two-month 

(extendable) time period. Applicants are 

advised that only a single surcharge 

under 37 CFR 1.16(f) is required in a 

nonprovisional application for filing 

any of the basic filing fee, the executed 

oath or declaration, the search fee, or 

the examination fee after the filing date 

of the application. 

Example: On December 15, 2010, 

applicant files a nonprovisional utility 

application under 35 U.S.C. 111(a) that 

claims the benefit of a prior-filed 

provisional application filed December 

20, 2009. The benefit claim to the 

provisional application is included in 

the first sentence of the specification of 

the nonprovisional application. The 

nonprovisional application is filed with 

a ‘‘Certification and Request for 

Extended Missing Parts Pilot Program’’ 

(Form PTO/SB/421). The 

nonprovisional application includes a 

specification in compliance with 37 

CFR 1.52, drawings in compliance with 

37 CFR 1.84, an abstract in compliance 

with 37 CFR 1.72(b), and an executed 

declaration in compliance with 37 CFR 

1.63. No fees are submitted with the 

nonprovisional application. Thereafter, 

on January 3, 2011, the USPTO mails a 

Notice to File Missing Parts of 

Nonprovisional Application that sets: 

(1) A two-month (extendable) time 

period for applicant to submit the basic 

filing fee and the surcharge under 37 

CFR 1.16(f), and (2) sets a twelve-month 

(non-extendable) time period for 

applicant to submit the search fee and 

the examination fee. In order to avoid 

abandonment of the application, 

applicant would need to either: (1) Pay 

the basic filing fee and the surcharge 

under 37 CFR 1.16(f) by March 3, 2011, 

if payment of the basic filing fee and the 

surcharge is being submitted without a 

petition for extension of time under 37 

CFR 1.136(a) and extension fee; or (2) 

pay the basic filing fee and the 

surcharge by no later than August 3, 

2011, if submitted with an appropriate 

petition for extension of time under 37 

CFR 1.136(a) and extension fee. In 

addition, applicant would need to pay 

the search fee and the examination fee 

by January 3, 2012, to avoid 

abandonment of the application. 

Applicant would not need to pay 

another surcharge with the search and 

examination fees since the surcharge 

was paid with the basic filing fee. 

B. Improper Requests: Requests to 

participate in the Extended Missing 

Parts Pilot Program will not be accepted 

in the following situations: (1) Where 

the certification and request is 

submitted in an application that is not 

eligible for the pilot program; (2) where 

the application is not entitled to a filing 

date; (3) where the certification and 

request is submitted after the filing date 

of the nonprovisional application; (4) 

where the nonprovisional application 

does not directly claim the benefit 

under 35 U.S.C. 119(e) and 37 CFR 1.78 

of a provisional application filed within 

the previous twelve months; and (5) 

where a nonpublication request is filed 

with the nonprovisional application. 

(1) Application is Not Eligible: Design 

applications, provisional applications, 

national stage applications under 35 

U.S.C. 371, international (PCT) 

applications, reissue applications, and 


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reexamination proceedings are excluded 

from the Extended Missing Parts Pilot 

Program. In these situations, the USPTO 

will send a Notice to File Missing Parts 

that sets a two-month (extendable) time 

period to submit any missing items 

including fees. 

(2) No Filing Date: If a nonprovisional 

application is submitted that does not 

meet the requirements under 35 U.S.C. 

111(a) to be accorded a filing date, the 

USPTO will send a Notice of Incomplete 

Application that sets a two-month time 

limit for applicant to submit the items 

required for a filing date. In the 

situation where a Notice of Incomplete 

Application is sent, the certification and 

request to participate in the Extended 

Missing Parts Pilot Program may be 

accepted once the application is entitled 

to a filing date if the requirements of the 

Extended Missing Parts Pilot Program 

are met. It should be noted, however, 

that if the nonprovisional application is 

accorded a filing date that is more than 

twelve months after the provisional 

application’s filing date, the 

certification and request to participate 

will not be accepted since the benefit 

claim to the provisional application 

would not be proper. 

(3) Untimely Request: If applicant 

submits the certification and request for 

the Extended Missing Parts Pilot 

Program after the filing date of the 

nonprovisional application, the USPTO 

will not accept the request and the 

application will not be eligible for the 

program. Therefore, the USPTO will 

send a Notice to File Missing Parts that 

sets a two-month (extendable) time 

period to submit any missing items 

including fees. 

(4) No Proper Benefit Claim: If 

applicant submits a certification and 

request to participate in the Extended 

Missing Parts Pilot Program, but does 

not include a claim for the benefit under 

35 U.S.C. 119(e) and 37 CFR 1.78 of a 

prior provisional application, the 

USPTO will send applicant a Notice to 

File Missing Parts that only sets a twomonth time period. In this situation, 

applicant may submit a proper benefit 

claim of a prior provisional application 

within four months from the filing date 

of the nonprovisional application if 

applicant still wants a twelve-month 

time period to submit the search fee, 

examination fee, any excess claims fees, 

and the surcharge (if appropriate). 

Applicant would need to timely file any 

other items required in the Notice to 

File Missing Parts. If applicant submits 

a proper benefit claim within four 

months, the USPTO would send a 

notice (e.g., a Notice of Incomplete 

Reply) that states applicant has a 

twelve-month time period from the 

mailing date (or notification date) of the 

initial Notice to File Missing Parts to 

submit the search fee, examination fee, 

any excess claims fees, and the 

surcharge (if the surcharge is not 

required for the late filing of the basic 

filing fee or an executed oath or 

declaration). If it is more than four 

months from the filing date of the 

nonprovisional application, applicant 

would most likely need a petition under 

37 CFR 1.78 to accept an 

unintentionally delayed claim for the 

benefit of a prior provisional 

application. Therefore, applicants will 

not be permitted to add or correct the 

benefit claim under 35 U.S.C. 119(e) and 

37 CFR 1.78 for the purpose of being 

eligible for the pilot program if it is 

more than four months from the filing 

date of the nonprovisional application. 

(5) A Nonpublication Request is Filed: 

If applicant submits a nonpublication 

request and a certification and request 

to participate in the Extended Missing 

Parts Pilot Program on filing of the 

application and thus the USPTO sends 

a Notice to File Missing Parts that only 

sets a two-month time period, applicant 

may submit a timely and properly 

signed rescission of the nonpublication 

request (e.g., PTO/SB/36) if applicant 

still wants a twelve-month time period 

to submit the search fee, examination 

fee, any excess claims fees, and the 

surcharge (if appropriate). Applicant 

would need to timely file any other 

items required in the Notice to File 

Missing Parts. If applicant submits such 

a proper rescission of the 

nonpublication request, the USPTO 

would send a notice (e.g., a Notice of 

Incomplete Reply) that states applicant 

has a twelve-month time period from 

the mailing date (or notification date) of 

the initial Notice to File Missing Parts 

to submit the search fee, examination 

fee, any excess claims fees, and the 

surcharge (if the surcharge is not 

required for the late filing of the basic 

filing fee or an executed oath or 

declaration). 

C. Authorization to Charge Fees: If 

applicant wishes to participate in the 

Extended Missing Parts Pilot Program, 

applicant should not provide a general 

authorization to charge fees or a specific 

authorization to charge the search, 

examination, and/or excess claims fees 

to a deposit account. However, in the 

rare situation where applicant files a 

proper certification and request to 

participate in the Extended Missing 

Parts Pilot Program with the application 

on filing, and all other requirements set 

forth in this notice are satisfied, but 

applicant submits an authorization to 

charge fees to a deposit account that 

covers fees set forth in 37 CFR 1.16, the 

USPTO will: (1) Recognize the 

certification and request to participate 

in the Extended Missing Parts Pilot 

Program; (2) provide applicant a twelvemonth (non-extendable) time period to 

pay the search and examination fees, 

any required excess claims fees, and the 

surcharge (if appropriate) in response to 

a Notice to File Missing Parts of 

Nonprovisional Application under the 

Extended Missing Parts Pilot Program; 

and (3) charge the basic filing fee and 

any required application size fee if not 

otherwise submitted. In this situation, 

the Office will accept the authorization 

to charge fees to a deposit account for 

any fees that are due, excluding the 

search and examination fees and excess 

claims fees. Thus, applicant will be 

eligible for the Extended Missing Parts 

Pilot Program and must reply to the 

Notice to File Missing Parts of 

Nonprovisional Application under the 

Extended Missing Parts Pilot Program 

within the twelve-month time period by 

paying the search and examination fees, 

any required excess claims fees, and any 

required surcharge, to avoid the 

abandonment of the application. 

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, first paragraph, 

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 

order to be accorded a filing date, a 

nonprovisional application requires a 

specification as prescribed by 35 U.S.C. 

112, which requires the specification to 

conclude with at least one claim, and 

drawings as prescribed by 35 U.S.C. 

113, which requires drawings if 

necessary for an understanding of the 

invention. See 35 U.S.C. 111(a). 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 of 

adding claims later during prosecution 


jlentini on DSKJ8SOYB1PROD with NOTICES
Federal Register / Vol. 75, No. 235 / Wednesday, December 8, 2010 / Notices 76405 

1The Commission voted 4–1 to publish this 

notice of the provisional Settlement Agreement and 

Order. Commissioner Nord issued a statement, and 

the statement can be found at http://www.cpsc.gov/ 

pr/statements.html. 

that 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). 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. 

The current patent term adjustment 

(PTA) provisions apply to all original 

utility or plant nonprovisional 

applications filed on or after May 29, 

2000, which will include applications 

under the pilot program. Therefore, any 

PTA accrued by an 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). If an applicant replies to a 

Notice to File Missing Parts more than 

three months after mailing (or 

notification) of the notice, the additional 

time will be treated as an offset to any 

positive PTA that is accrued by 

applicant. 

In no event will a reduction under 37 

CFR 1.704(b) reduce the twenty-year 

patent term. The ‘‘twenty-year patent 

term’’ refers to the term of a patent 

(other than a design patent) that begins 

on the date the patent issues and ends 

on the date that is twenty years from the 

date on which the application for patent 

was filed in the United States or, if the 

application contains a specific reference 

to an earlier filed application or 

applications under 35 U.S.C. 120, 121, 

or 365(c), twenty years from the filing 

date of the earliest of such 

application(s). See 35 U.S.C. 154(a)(2). 

Domestic benefit under 35 U.S.C. 119(e) 

to one or more provisional applications 

is not considered in the calculation of 

the twenty-year term. For more 

information on patent term, see section 

2701 of the Manual of Patent Examining 

Procedure (MPEP) (8th ed. 2001) (Rev. 

2, May 2004). 

Applicants are also reminded that fees 

are subject to change and the fees that 

are due in an application are the fees in 

effect at the time of fee payment. 

Therefore, if the search fee, examination 

fee, excess claims fees, and/or the 

surcharge (or any other fees) have 

increased after the mailing (or 

notification) of a Notice to File Missing 

Parts that sets a time period to pay such 

fees, applicant will be required to pay 

the increased fee amounts. Applicants 

should consult the current fee schedule 

on the USPTO Web site before paying 

any fees that are due. 

Form PTO/SB/421 will include an 

identification of the requirements of the 

Extended Missing Parts Pilot Program as 

well as various acknowledgments 

regarding the pilot program. Therefore, 

applicants requesting participation in 

the Extended Missing Parts Pilot 

Program should be aware of the 

requirements and the potential 

drawbacks of the pilot program. 

IV. Paperwork Reduction Act: An 

applicant who wishes to participate in 

the pilot program must submit a 

certification and request to participate 

in the Extended Missing Parts Pilot 

Program, preferably by using Form PTO/ 

SB/421. The Office of Management and 

Budget (OMB) has determined that, 

under 5 CFR 1320.3(h), Form PTO/SB/ 

421 does not collect ‘‘information’’ 

within the meaning of the Paperwork 

Reduction Act of 1995 (44 U.S.C. 3501 

et seq.). Therefore, this notice does not 

involve information collection 

requirements which are subject to 

review by OMB. 

The USPTO previously published the 

notice Missing Parts Practice, 75 FR 

53631 (Sept. 1, 2010), requesting 

comments on the USPTO’s proposal to 

collect information using Form PTO/SB/ 

421. In light of OMB’s determination 

that Form PTO/SB/421 does not collect 

information within the meaning of the 

Paperwork Reduction Act of 1995 (44 

U.S.C. 3501 et seq.), the USPTO is 

withdrawing the request for comments 

issued in the September 1, 2010 notice. 

V. Additional Information: While the 

USPTO also requested comments on an 

optional service of having an 

international style search report 

prepared during the twelve-month 

extended missing parts period, the 

USPTO is not implementing such a 

service at this time. 

Dated: November 19, 2010. 

David J. Kappos, 

Under Secretary of Commerce for Intellectual 

Property and Director of the United States 

Patent and Trademark Office. 

[FR Doc. 2010–30822 Filed 12–7–10; 8:45 am] 

BILLING CODE 3510–16–P 

CONSUMER PRODUCT SAFETY 

COMMISSION 

[CPSC Docket No. 11–C0002] 

Winter Bee, Inc., Provisional 

Acceptance of a Settlement Agreement 

and Order 

AGENCY: Consumer Product Safety 

Commission. 

ACTION: Notice. 

SUMMARY: It is the policy of the 

Commission to publish settlements 

which it provisionally accepts under the 

Consumer Product Safety Act in the 

Federal Register in accordance with the 

terms of 16 CFR 1118.20(e).1 Published 

below is a provisionally-accepted 

Settlement Agreement with Winter Bee, 

Inc., containing a civil penalty of 

$200,000.00, to be suspended except for 

$40,000.00, to be paid over a period of 

20 months as specified in the Order. 

DATES: Any interested person may ask 

the Commission not to accept this 

agreement or otherwise comment on its 

contents by filing a written request with 

the Office of the Secretary by December 

23, 2010. 

ADDRESSES: Persons wishing to 

comment on this Settlement Agreement 

should send written comments to the 

Comment 11–C0002, Office of the 

Secretary, Consumer Product Safety 

Commission, 4330 East West Highway, 

Room 820, Bethesda, Maryland 20814– 

4408. 

FOR FURTHER INFORMATION CONTACT: Seth 

B. Popkin, Lead Trial Attorney, Division 

of Enforcement and Information, Office 

of the General Counsel, Consumer 

Product Safety Commission, 4330 East 

West Highway, Bethesda, Maryland 

20814–4408; telephone (301) 504–7612. 

SUPPLEMENTARY INFORMATION: The text of 

the Agreement and Order appears 

below. 


jlentini on DSKJ8SOYB1PROD with NOTICES