2256 Federal Register / Vol. 78, No. 7 / Thursday, January 10, 2013 / Notices 

NMFS’ web page at 

www.nmfs.noaa.gov/mafac.htm. 

Dated: January 4, 2013. 

Samuel D. Rauch III, 

Deputy Assistant Administrator for 

Regulatory Programs, performing the 

functions and duties of the Assistant 

Administrator for Fisheries, National Marine 

Fisheries Service. 

[FR Doc. 2013–00346 Filed 1–9–13; 8:45 am] 

BILLING CODE 3510–22–P 

DEPARTMENT OF COMMERCE 

United States Patent and Trademark 

Office 

[Docket No.: PTO–P–2012–0055] 

Extension of the Extended Missing 

Parts Pilot Program 

AGENCY: United States Patent and 

Trademark Office, Commerce. 

ACTION: Notice. 

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, 2013, 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, 2013. Therefore, any 

certification and request to participate 

in the Extended Missing Parts Pilot 

Program must be filed before December 

31, 2013. 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 

PatentPractice@uspto.gov. 

SUPPLEMENTARY INFORMATION: 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 

extended the Extended Missing Parts 

Pilot Program until December 31, 2012. 

See Extension of the Extended Missing 

Parts Pilot Program, 76 FR 78246 (Dec. 

16, 2011), 1374 Off. Gaz. Pat. Office 113 

(Jan. 10, 2012). 

The USPTO is extending the 

Extended Missing Parts Pilot Program 

until December 31, 2013. The USPTO 

may further extend the Extended 

Missing Parts Pilot Program, or may 

discontinue the pilot program after 

December 31, 2013, depending on the 

results of the program. The 

requirements of the program 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. 

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/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)(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) 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 


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Federal Register / Vol. 78, No. 7 / Thursday, January 10, 2013 / Notices 2257 

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 filed 

by mail (e.g., by ‘‘Express Mail’’ in 

accordance with 37 CFR 1.10) or handcarried to the USPTO. 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 nonsmall 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 twelvemonth time period to pay the nonelectronic filing fee. Therefore, utility 

applicants are strongly encouraged to 

file their utility applications via EFSWeb 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/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. 

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 order to be accorded a 

filing date, a nonprovisional application 

must include a specification concluding 

with at least one claim as prescribed by 

35 U.S.C. 112 and a drawing as 

prescribed by 35 U.S.C. 113. 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 that any claims 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). 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. 

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 3, 2013. 

Teresa Stanek Rea, 

Deputy Under Secretary of Commerce for 

Intellectual Property and Deputy Director of 

the United States Patent and Trademark 

Office. 

[FR Doc. 2013–00336 Filed 1–9–13; 8:45 am] 

BILLING CODE 3510–16–P 

CONSUMER PRODUCT SAFETY 

COMMISSION 

Sunshine Act Meeting 

TIME AND DATE: Wednesday, January 16, 

2013, 10:00 a.m.–12:00 p.m. 

PLACE: Room 420, Bethesda Towers, 

4330 East West Highway, Bethesda, 

Maryland. 

STATUS: Commission Meeting—Open to 

the Public 

Matters To Be Considered 

Decisional Matters 

1. Section 1110 Certificated of 

Compliance—Notice of Proposed 

Rulemaking; 

2. Fiscal Year 2013 Operating Plan 

A live webcast of the Meeting can be 

viewed at www.cpsc.gov/webcast 

For a recorded message containing the 

latest agenda information, call (301) 

504–7948. 

CONTACT PERSON FOR MORE INFORMATION: 

Todd A. Stevenson, Office of the 

Secretary, U.S. Consumer Product 


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