Federal Register / Vol. 83, No. 7 / Wednesday, January 10, 2018 / Notices 1243 

(b) The accuracy of the agency’s 

estimate of the burden (including hours 

and cost) of the proposed collection of 

information; 

(c) Ways to enhance the quality, 

utility, and clarity of the information to 

be collected; and 

(d) Ways to minimize the burden of 

the collection of information on 

respondents, e.g., the use of automated 

collection techniques or other forms of 

information technology. 

Marcie Lovett, 

Records and Information Governance 

Division Director, OCTO, United States Patent 

and Trademark Office. 

[FR Doc. 2018–00265 Filed 1–9–18; 8:45 am] 

BILLING CODE 3510–16–P 

DEPARTMENT OF COMMERCE 

United States Patent and Trademark 

Office 

[Docket No.: PTO–P–2017–0052] 

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 12-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 providing 

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 January 2, 2019, to allow 

the USPTO to continue its evaluation of 

the pilot program. The requirements of 

the program have not changed. 

DATES: Duration: The Extended Missing 

Parts Pilot Program will run through 

January 2, 2019. Therefore, any 

certification and request to participate 

in the Extended Missing Parts Pilot 

Program must be filed on or before 

January 2, 2019. In addition, any 

certification and request to participate 

in the Extended Missing Parts Pilot 

Program filed between January 2, 2018, 

and the publication date of this notice 

will be considered timely. The USPTO 

intends to make a decision before 

January 2, 2019, on whether the 

Extended Missing Parts Pilot Program 

offers sufficient benefits to the patent 

community for it to be made permanent 

or whether the USPTO should permit 

the program to expire. 

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 Erin M. Harriman, 

Senior Legal Advisor, Office of Patent 

Legal Administration, Office of the 

Deputy Commissioner for Patent 

Examination Policy, by telephone at 

(571) 272–7747. 

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. 

Alternatively, mail may be 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. 

SUPPLEMENTARY INFORMATION: On 

December 8, 2010, after considering 

written comments from the public, the 

USPTO changed the missing parts 

examination procedures in certain 

nonprovisional applications by 

implementing a pilot program (i.e., 

Extended Missing Parts Pilot Program). 

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). Over the course of the pilot 

program, the USPTO provided 

extensions of the Extended Missing 

Parts Pilot Program through notices 

published in the Federal Register. The 

most recent notice extended the 

program until January 2, 2018. See 

Extension of Extended Missing Parts 

Pilot Program, 81 FR 93669 (Dec. 21, 

2016), 1434 Off. Gaz. Pat. Office 187 

(Jan. 17, 2017). 

The requirements of the program, 

which have not been modified, are 

reiterated below. Applicants are 

strongly advised to review the pilot 

program requirements before making a 

request to participate in the Extended 

Missing Parts Pilot Program. 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 

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 12 

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) amended the provisions 

of title 35, United States Code, 

including 35 U.S.C. 119(e), to 

implement the Patent Law Treaty (PLT). 

See Public Law 112–211, §§ 20–203, 126 

Stat. 1527, 1533–37 (2012). In the 

rulemaking to implement the PLT and 

title II of the PLTIA, the USPTO 

provided that an applicant may file a 

petition under 37 CFR 1.78(b) 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 was effective on December 18, 

2013, and applies to any application 

filed before, on, or after December 18, 

2013. However, if a nonprovisional 

application is filed outside the 12- 

month period from the date on which 

the corresponding provisional 

application was filed, the 

nonprovisional application is not 

eligible for participation in the 

Extended Missing Parts Pilot Program, 

even though the applicant may be able 

to restore the benefit of the provisional 

application by submitting a petition 

under 37 CFR 1.78(b). 

I. Requirements: In order for an 

applicant to be provided a 12-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) The 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, 


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1244 Federal Register / Vol. 83, No. 7 / Wednesday, January 10, 2018 / Notices 

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 12 months, and 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) the applicant must 

not have filed a nonpublication request. 

As required for all nonprovisional 

applications, the 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 USPTO 

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 (as 

prescribed by 35 U.S.C. 112) 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 was effective on 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 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 18 

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, the applicant 

will need to satisfy the publication 

requirements within a two-month 

extendable time period. 

As noted above, applicants should use 

Form PTO/AIA/421 to request 

participation in the Extended Missing 

Parts Pilot Program. For utility patent 

applications, the 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 website at http://

www.uspto.gov/sites/default/files/ 

forms/aia0421.pdf. Information 

regarding EFS-Web is available on the 

USPTO website at http://

www.uspto.gov/patents-applicationprocess/applying-online/about-efs-web. 

The utility application including the 

certification and request to participate 

in the pilot program may also be handcarried to the USPTO or filed by mail, 

for example, by 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, 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 12-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, the 

applicant must file the application, 

including the certification and request 

to participate in the pilot program, by 

mail or hand-carry 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 the 

applicant satisfies the requirements 

(discussed above) on filing of the 

nonprovisional application and the 

application is in condition for 

publication, the USPTO will send the 

applicant a Notice to File Missing Parts 

of Nonprovisional Application that sets 

a 12-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 12-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 eOffice Action program, see Electronic 

Office Action, 1343 Off. Gaz. Pat. Office 

45 (June 2, 2009), and http://

www.uspto.gov/patents-applicationprocess/checking-application-status/eoffice-action-program. After an 

applicant files a timely reply to the 

Notice to File Missing Parts within the 

12-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) and 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 


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Federal Register / Vol. 83, No. 7 / Wednesday, January 10, 2018 / Notices 1245 

implement the PLT and title II of the 

PLTIA, the USPTO 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 

was effective on 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 the 

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, the 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 12-month priority period 

provided by the Paris Convention for 

the Protection of Industrial Property 

(Paris Convention). Accordingly, in 

most cases, any foreign filings must still 

be made within 12 months of the filing 

date of the provisional application if the 

applicant wishes to rely on the 

provisional application in the foreignfiled application or if protection is 

desired in a country requiring filing 

within 12 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 5, 2018. 

Joseph D. Matal, 

Associate Solicitor, 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. 2018–00270 Filed 1–9–18; 8:45 am] 

BILLING CODE 3510–16–P 

DEPARTMENT OF COMMERCE 

United States Patent and Trademark 

Office 

Fastener Quality Act Insignia Recordal 

Process 

ACTION: Proposed extension of an 

existing information collection; 

comment request. 

SUMMARY: The United States Patent and 

Trademark Office (USPTO), as required 

by the Paperwork Reduction Act of 

1995, invites comments on a proposed 

extension of an existing information 

collection: 0651–0028 (Fastener Quality 

Act Insignia Recordal Act). 

DATES: Written comments must be 

submitted on or before March 12, 2018. 

ADDRESSES: You may submit comments 

by any of the following methods: 

• Email: InformationCollection@

upsto.gov. Include ‘‘0651–0028 

comment’’ in the subject line of the 

message. 

• Federal Rulemaking Portal: http://

www.regulations.gov. 

• Mail: Marcie Lovett, Records and 

Information Governance Division 

Director, Office of the Chief Technology 

Officer, United States Patent and 

Trademark Office, P.O. Box 1450, 

Alexandria, VA 22313–1450. 

FOR FURTHER INFORMATION CONTACT: 

Requests for additional information 

should be directed to Catherine Cain, 

Attorney Advisor, Office of the 

Commissioner for Trademarks, United 

States Patent and Trademark Office, 

P.O. Box 1450, Alexandria, VA 22313– 

1450; by telephone at 571–272–8946; or 

by email to Catherine.Cain@uspto.gov 

with ‘‘0651–0028 comment’’ in the 

subject line. Additional information 

about this collection is also available at 

http://www.reginfor.gov under 

‘‘Information Collection Review.’’ 

SUPPLEMENTARY INFORMATION: 

I. Abstract 

Under Section 5 of the Fastener 

Quality Act (FQA) of 1999, 15 U.S.C. 

5401 et seq., certain industrial fasteners 

must bear an insignia identifying the 

manufacturer. It is also mandatory for 

manufacturers of fasteners covered by 

the FQA to submit an application to the 

USPTO for recordal of the insignia on 

the Fastener Insignia Register. 

The procedures for the recordal of 

fastener insignia under the FQA are set 

forth in 15 CFR 280.300 et seq. The 

purpose of requiring both the insignia 

and the recordation is to ensure that 

certain fasteners can be traced to their 

manufacturers and to protect against the 

sale of mismarked, misrepresented, or 

counterfeit fasteners. 

The insignia may be sourced from an 

existing trademark registered at USPTO, 

from a trademark that is proposed in an 

application to obtain a registration 

currently before the USPTO, or from a 

unique alphanumeric designation 

issued upon request from the USPTO. 

After a manufacturer submits a 

complete application for recordal, the 

USPTO issues a Certificate of Recordal. 

These certificates remain active for five 

years. Applications to renew the 

certificates must be filed within six 

months of the expiration date or, upon 

payment of an additional surcharge, 

within six months following the 

expiration date. 

If a recorded alphanumeric 

designation is assigned by the 

manufacturer to a new owner, the 

designation becomes ‘‘inactive’’ and the 

new owner must submit an application 

to reactivate the designation within six 

months of the date of assignment. If the 

recordal is based on a trademark 

application or registration and the 

registration is assigned to a new owner, 

the recordal becomes ‘‘inactive’’ and 

cannot be reassigned. Instead, the new 

owner of the trademark application or 

registration must apply for a new 

recordal. Manufacturers who record 

insignia must notify the USPTO of any 

changes of address. 

This information collection includes 

one form, the Application for Recordal 

of Insignia or Renewal/Reactivation of 

Recordal Under the Fastener Quality 

Act (PTO–1611), which provides 

manufacturers with a convenient way to 

submit a request for the recordal of a 

fastener insignia or to renew or 

reactivate an existing Certificate of 

Renewal. 

The public uses this information 

collection to comply with the insignia 

recordal provisions of the FQA. The 

USPTO uses the information in this 

collection to record or renew insignias 

under the FQA and to maintain the 

Fastener Insignia Register, which is 

open for public inspection and is 

updated quarterly. The public may 

download the Fastener Insignia Register 

from the USPTO website. 


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