[Federal Register Volume 76, Number 242 (Friday, December 16, 2011)]
[Notices]
[Pages 78246-78247]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2011-32330]


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DEPARTMENT OF COMMERCE

United States Patent and Trademark Office

[Docket No. PTO-P-2011-0076]


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 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, 2012, to better gauge 
whether the Extended Missing Parts Program offers sufficient benefits 
to the patent community for it to be made permanent.

DATES: Effective Date: December 16, 2011.
    Duration: The Extended Missing Parts Pilot Program will run through 
December 31, 2012. Therefore, any certification and request to 
participate in the Extended Missing Parts Pilot Program must be filed 
before December 31, 2012. 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 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 [email protected].

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 is extending the Extended Missing Parts Pilot Program 
until December 31, 2012. The USPTO may further extend the Extended 
Missing Parts Pilot Program, or may discontinue the pilot program after 
December 31, 2012, 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 twelve-
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) 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 titled ``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 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

[[Page 78247]]

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 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 is 
available on the USPTO Web site at http://www.uspto.gov/forms/sb0421.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 hand-carried 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 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 twelve-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, 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/e-Office_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, 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 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: December 6, 2011.
David J. Kappos,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2011-32330 Filed 12-15-11; 8:45 am]
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