[Federal Register Volume 75, Number 63 (Friday, April 2, 2010)]
[Notices]
[Pages 16750-16752]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2010-7520]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

[Docket No.: PTO-P-2010-0029]


Request for Comments on Proposed Change To Missing Parts Practice

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Request for comments.

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SUMMARY: The United States Patent and Trademark Office (USPTO), in 
response to a number of requests to reduce the costs due one year after 
filing a provisional application, is considering a change that would 
effectively provide a 12-month extension to the 12-month provisional 
application period (creating a net 24-month period). This change would 
be implemented through the missing parts practice in nonprovisional 
applications. Currently the missing parts practice permits an applicant 
on payment of a surcharge to pay the up-front filing fees and submit an 
executed oath or declaration after the filing of a nonprovisional 
application within a two-month time period set by the USPTO that is 
extendable on payment of extension of time fees for an additional five 
months. Under the proposal, applicants would be permitted to file a 
nonprovisional application with at least one claim within the 12-month 
statutory period after the provisional application was filed, pay the 
basic filing fee, and submit an executed oath or declaration. In 
addition, the nonprovisional application would need to be in condition 
for publication and applicant would not be able to file a 
nonpublication request. Applicants would be given a 12-month period to 
decide whether the nonprovisional application should be completed by 
paying the required surcharge and the search, examination and any 
excess claim fees due within that 12-month period. The proposal would 
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 proposal would 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 the applicants 
have decided not to pursue examination. Importantly, the extended 
missing parts period would not affect the 12-month priority period 
provided by the Paris Convention for the Protection of Industrial 
Property and, thus, any foreign filings would still need to be made 
within 12 months of the filing date of the provisional application if 
applicant wishes to rely on the provisional application in the foreign-
filed application.
    Comment Deadline Date: To be ensured of consideration, written 
comments must be received on or before June 1, 2010.

ADDRESSES: Written comments should be sent by electronic mail message 
over the Internet addressed to [email protected]. 
Comments may also be submitted 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. Although 
comments may be submitted by mail, the USPTO prefers to receive 
comments via the Internet.
    The written comments will be available for public inspection at the 
Office of the Commissioner for Patents, located in Madison East, Tenth 
Floor, 600 Dulany Street, Alexandria, Virginia, 22314, and will be 
available via the USPTO Internet Web site (address: http://www.uspto.gov). Because comments will be made available for public 
inspection, information that is not desired to be made public, such as 
an address or phone number, should not be included in the comments.

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.

SUPPLEMENTARY INFORMATION: Applicants have a one-year period from the 
filing date of a provisional application to file a corresponding 
nonprovisional application in order to claim the benefit of the 
provisional application. Roughly fifty percent of provisional 
applications are abandoned without the subsequent filing of 
nonprovisional applications claiming their benefit. Many applicants 
have expressed that a longer period of time to draft a complete set of 
claims and pay fees would facilitate their efforts to determine whether 
their inventions have commercial viability, and would enable more 
informed and economically efficient decision making for applicants 
considering filing nonprovisional applications claiming benefit of 
prior provisional applications. Moreover, these same applicants have 
expressed that they would be willing to commit to 18-month publication 
of the invention disclosed in their provisional applications benefiting 
from any extension period, as well as any nonprovisional applications 
later claiming benefit of such provisional applications.
    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). 
The proposed change would not alter this statutory requirement but 
would allow applicants to more easily avail themselves of the benefits 
of missing parts practice in nonprovisional applications.
    Under the current missing parts practice, if a nonprovisional 
application filed under 35 U.S.C. 111(a) has been accorded a filing 
date but does not include the basic filing fee, the search fee, the 
examination fee, or an oath or declaration under 37 CFR 1.63, the USPTO 
will send a missing parts notice and set a time period for the 
applicant to submit the missing items and pay any required surcharge to 
avoid abandonment. See 37 CFR 1.53(f). If excess claims fees, a 
multiple dependent claim fee, and/or an application size fee are 
required and such fees have not been paid, then these fees are also 
required to be paid in response to a missing parts notice. Currently, 
the time period set forth in a missing parts notice is two months with 
extensions of time of up to five months under 37 CFR 1.136(a) being 
available.
    The USPTO is requesting public comment on whether the missing parts 
practice should be changed to provide applicants with an extended time 
period to reply to a missing parts notice requiring fees in a 
nonprovisional application filed under 35 U.S.C. 111(a) that claims the 
benefit of a provisional application under the conditions that the 
basic filing fee for the

[[Page 16751]]

nonprovisional application has been paid, an executed oath or 
declaration under 37 CFR 1.63 has been filed, a nonpublication request 
has not been filed, and the application is in condition for 
publication. A benefit of such extension would be increased use of the 
18-month publication system resulting from: (1) Additional 
nonprovisional applications being filed that would not have been filed 
without the ability to have 12 months to reply to a missing parts 
notice with no extension of time fees being required; and (2) 
nonprovisional applications being filed without a nonpublication 
request so that applicant will be given the 12-month time period to 
reply to a missing parts notice. A second benefit is added flexibility 
for applicants who may otherwise be forced to expend resources 
completing nonprovisional applications that may prove unnecessary given 
an additional year of commercialization efforts. Providing a longer 
time period to reply to a missing parts notice would give applicants 
more time to ascertain the value of their inventions, thereby helping 
applicants to decide whether to incur the additional costs associated 
with pursuing patent rights. Applications not completed as 
nonprovisional applications additionally benefit the USPTO and all 
other users of the patent system, by removing unnecessary workload from 
the agency. A third benefit is better targeting of applicant resources 
to commercialization efforts at critical time periods, which efforts 
can ultimately result in creation of jobs as well as new products and 
services. This sequencing of effort in turn will lead to more efficient 
and purposeful engagement with the USPTO for those applications that 
are filed and completed as nonprovisional applications.
    The percentage of provisional applications that are subsequently 
relied upon in a nonprovisional application has been declining over 
time, leaving a higher percentage of provisional applications as 
abandoned, unrelied upon applications. In 2008, 143,120 provisional 
applications were filed. Thereafter, 72,792 nonprovisional or 
international applications were filed that claimed the benefit of one 
or more of the provisional applications filed in 2008 (or 50.8 percent 
of the provisional applications). In 2007, 132,581 provisional 
applications were filed. Thereafter, 75,330 nonprovisional or 
international applications were filed that claimed the benefit of one 
or more of the provisional applications filed in 2007 (or 56.8 percent 
of the provisional applications). In 2006, 121,471 provisional 
applications were filed. Thereafter, 73,136 nonprovisional or 
international applications were filed that claimed the benefit of one 
or more of the provisional applications filed in 2006 (or 60.2 percent 
of the provisional applications). In 2005, 111,753 provisional 
applications were filed. Thereafter, 68,511 nonprovisional or 
international applications were filed that claimed the benefit of one 
or more of the provisional applications filed in 2005 (or 61.3 percent 
of the provisional applications). In 2004, 102,268 provisional 
applications were filed. Thereafter, 63,146 nonprovisional or 
international applications were filed that claimed the benefit of one 
or more of the provisional applications filed in 2004 (or 61.7 percent 
of the provisional applications). For provisional applications filed 
from 1998 to 2003, the percentage of provisional applications relied 
upon in a subsequent application ranged from 61.2 to 63.2 percent.
    Currently, some applicants take advantage of the missing parts 
practice to file nonprovisional applications without complete claim 
sets by omitting an executed oath or declaration or failing to pay the 
search and examination fees up front. Such filings result in a notice 
to file missing parts which must be replied to in order to complete the 
application prior to docketing for examination. A subset of these 
applicants then file a continuing application claiming the benefit of 
the first-filed nonprovisional application that claimed the benefit of 
the prior provisional application, rather than a reply to the notice to 
file missing parts, in order to effectively extend the time period to 
complete the nonprovisional application. The current proposal to 
provide a time period of twelve months for an applicant to reply to a 
missing parts notice under certain conditions seeks to provide 
applicants with a streamlined alternative to this practice by 
eliminating the need to refile the application and to pay significant 
extension of time fees.
    Similarly, applicants who file several nonprovisional patent 
applications based on a number of provisional applications may fail to 
have sufficient focus on what they deem to be their most important 
applications. In addition, by failing to prioritize USPTO efforts on 
the nonprovisional applications deemed most important by applicants, 
greater delay in the processing and examination of all nonprovisional 
applications by the USPTO occurs. The current proposal would help 
applicants focus on their most important applications and conserve 
USPTO resources.
    In order for an applicant to be provided a 12-month (non-
extendable) time period to reply to a missing parts notice, the 
applicant would need to satisfy the following conditions: (1) The 
nonprovisional application filed under 35 U.S.C. 111(a) must claim the 
benefit of a prior-filed provisional application; (2) the basic filing 
fee must have been paid (in the nonprovisional application); (3) an 
executed oath or declaration under 37 CFR 1.63 must have been filed; 
(4) applicant must not have filed a nonpublication request, or the 
applicant must have filed a request to rescind a previously filed 
nonpublication request; and (5) the application must be in condition 
for publication as provided in 37 CFR 1.211(c). After an applicant 
timely replies to the missing parts notice within the 12-month time 
period and the nonprovisional application is completed, the 
nonprovisional application would be placed in the examination queue 
based on the actual filing date of the nonprovisional application. 
Therefore, there would be no change made in the order in which 
applications are examined as a result of the current proposal.
    An applicant who has filed a provisional application with a 
complete disclosure and high quality application papers (e.g., papers 
that satisfy the requirements of 37 CFR 1.52) would, in most cases, be 
able to file a nonprovisional application with little additional effort 
and expense. In addition to the requirements of a provisional 
application, a nonprovisional application requires at least one claim 
and an executed oath or declaration under 37 CFR 1.63. Thus, for 
example, where a provisional application was filed without any claims, 
the applicant would need to: (1) Draft at least one claim and file the 
nonprovisional application using essentially a copy of the provisional 
application papers (e.g., specification and drawings), with minor 
revisions to add the claim(s) at the end of the specification and the 
reference to the prior-filed provisional application in the first 
sentence of the specification; (2) submit an executed oath or 
declaration under 37 CFR 1.63; and (3) submit the basic filing fee. A 
preliminary amendment adding additional claims could be submitted along 
with the reply to the missing parts notice. Currently, the small entity 
basic filing fee for a utility application is $165.00, or $82.00 if 
filed electronically using the USPTO's electronic filing system (EFS-
Web). The non-small entity basic filing fee for a utility application 
is $330.00. To

[[Page 16752]]

complete the application for examination, the remainder of the filing 
fees and the required surcharge ($65.00 for small entities and $130.00 
for other applicants) would be due within the 12-month time period set 
in the missing parts notice. Thus, an additional $445.00 for small 
entities and $890.00 for other applicants would be due for payment of 
the surcharge and the search and examination fees (plus any required 
excess claims fees and application size fee). Furthermore, the 
publication fee would not be required until mailing of a notice of 
allowance (unless early publication is requested).
    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. Applicants are also advised that the extended missing 
parts period would not affect the 12-month priority period provided by 
the Paris Convention for the Protection of Industrial Property (Paris 
Convention) and, thus, any foreign filings would still need to be made 
within 12 months of the filing date of the provisional application if 
applicant wishes to rely on the provisional application in the foreign-
filed application.
    As discussed, the USPTO would require the nonprovisional 
application to be in condition for publication. In addition, the USPTO 
would publish the application promptly after the expiration of eighteen 
months from the earliest filing date for which a benefit is sought. 
Thus, if there are informalities in the application papers that need 
correction 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), the USPTO would still send a missing parts notice that 
sets a two-month (extendable) time period (not the 12-month extended 
missing parts period) for the applicant to correct the informalities as 
well as submit any missing items or required fees.
    The USPTO is also considering offering applicants an optional 
service of having an international style search report prepared during 
the 12-month extended missing parts period. The optional service would 
provide the applicant with information concerning the state of the 
prior art and may be useful in determining whether to complete the 
application and the claims to pursue if the application is completed. 
The search report that would be prepared would be similar to the search 
report that is prepared for international applications. See PCT Rule 43 
and Manual of Patent Examining Procedure (MPEP) Sec.  1844. The fee for 
this service would be set, through rule making, to recover the 
estimated average cost of providing the service and is anticipated to 
be consistent with the current cost of conducting an international 
search. See 35 U.S.C. 41(d)(2) and 37 CFR 1.445(a)(2). It should be 
noted that if applicant decides to file a reply to the missing parts 
notice and complete the nonprovisional application after having 
received such a search report, the applicant would still be required to 
pay the search fee (set forth in 35 U.S.C. 41(d)(1) and 37 CFR 1.16) 
with the reply to the missing parts notice, and the examiner would 
still conduct the search that is currently done as part of the 
examination of nonprovisional applications. See MPEP Sec. Sec.  704.01 
and 904-904.03. This is analogous to international applications where 
applicant is required to pay the search fee set forth in 37 CFR 
1.445(a)(2) and the USPTO will conduct a search and prepare an 
international search report when the USPTO is the International 
Searching Authority; and then, after the international application 
enters the national stage in the United States, applicant is required 
to pay the national stage search fee set forth 37 CFR 1.492(b) and the 
examiner will conduct a search as part of the examination of the 
application.
    Any patent term adjustment (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). Thus, if an applicant replies to a notice to file missing 
parts more than three months after mailing of the notice, the 
additional time would be treated as an offset to any positive PTA that 
will be accrued by applicant. The USPTO envisions that no change would 
be made to the current regulations (including the patent term 
adjustment regulations) except to provide for the fee for the optional 
service of an international style search report, if the USPTO decides 
to implement the proposed change to the missing parts practice.
    The USPTO is publishing this request for comments to gather public 
feedback on, and to determine the level of interest in, the proposed 
change to missing parts practice as well as the optional service to 
provide a search report during the extended missing parts period 
discussed in this notice. Comments or suggestions are solicited on 
whether or how the USPTO should revise the missing parts practice.

    Dated: March 29, 2010.
David J. Kappos,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2010-7520 Filed 4-1-10; 8:45 am]
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