[Federal Register Volume 80, Number 8 (Tuesday, January 13, 2015)]
[Notices]
[Pages 1624-1627]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2015-00372]


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DEPARTMENT OF COMMERCE

 Patent and Trademark Office

[Docket No.: PTO-P-2014-0064]


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

[[Page 1625]]

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 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, 2015, to better gauge whether the Extended Missing Parts Program 
offers sufficient benefits to the patent community for it to be made 
permanent. The requirements of the program have not changed.

DATES: Duration: The Extended Missing Parts Pilot Program will run 
through December 31, 2015. Therefore, any certification and request to 
participate in the Extended Missing Parts Pilot Program must be filed 
before December 31, 2015. 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 <a href="/cdn-cgi/l/email-protection#23734257464d5773514240574a404663565053574c0d444c55"><span class="__cf_email__" data-cfemail="c191a0b5a4afb591b3a0a2b5a8a2a481b4b2b1b5aeefa6aeb7">[email protected]</span></a>.

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). The USPTO 
has previously 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); 
Extension of the Extended Missing Parts Pilot Program, 78 FR 2256 (Jan. 
10, 2013), 1387 Off. Gaz. Pat. Office 46 (Feb. 5, 2013); Extension of 
Extended Missing Parts Pilot Program, 79 FR 642 (Jan. 6, 2014), 1398 
Off. Gaz. Pat. Office 197 (Jan. 28, 2014).
    The USPTO is further extending the Extended Missing Parts Pilot 
Program until December 31, 2015. The USPTO may further extend the 
Extended Missing Parts Pilot Program, or may discontinue the pilot 
program after December 31, 2015, 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 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, 
Sec. Sec.  20-203, 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 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 petition under 37 CFR 1.78(b) 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 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, 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 
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 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

[[Page 1626]]

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 request participation in the 
Extended Missing Parts Pilot Program by using Form PTO/AIA/421. 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 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/patents/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 Priority Mail Express[supreg] 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 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-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 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 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 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 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 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, any foreign filings must, in most cases, 
still be made within 12 months of the filing date of the provisional 
application if the

[[Page 1627]]

applicant wishes to rely on the provisional application in the foreign-
filed 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 7, 2015.
Michelle K. Lee,
Deputy Under Secretary of Commerce for Intellectual Property and Deputy 
Director of the United States Patent and Trademark Office.
[FR Doc. 2015-00372 Filed 1-12-15; 8:45 am]
BILLING CODE 3510-16-P


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