[Federal Register Volume 79, Number 3 (Monday, January 6, 2014)]
[Notices]
[Pages 642-644]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2013-31574]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

[Docket No. PTO-P-2013-0061]


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, 2014, 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, 2014. Therefore, any certification and request to 
participate in the Extended Missing Parts Pilot Program must be filed 
before December 31, 2014. 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 [email protected].

SUPPLEMENTARY INFORMATION: On December 8, 2010, 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 has twice 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), and Extension of the Extended 
Missing Parts Pilot Program, 78 FR 2256 (Jan. 10, 2013), 1387 Off. Gaz. 
Pat. Office 46 (Feb. 5, 2013).
    The USPTO is further extending the Extended Missing Parts Pilot 
Program until December 31, 2014. The USPTO may further extend the 
Extended Missing Parts Pilot Program, or may discontinue the pilot 
program after December 31, 2014, 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 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. 
Title II of the Patent Law Treaties Implementation Act of 2012 (PLTIA) 
amends the provisions of title 35, United States Code, to implement the 
Patent Law Treaty (PLT). See Public

[[Page 643]]

Law 112-211, sections 20 through 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 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 is effective 
December 18, 2013, and applies to any application filed before, on, or 
after December 18, 2013. However, if a petition 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 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/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)(3)); 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 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 is effective 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 (OPAP) 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 eighteen 
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, 
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, 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 hand-carried to the USPTO 
or filed by mail, for example, by ``Express Mail'' (now ``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, 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

[[Page 644]]

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 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 is effective 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 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, 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 twelve-month priority period provided by the Paris 
Convention for the Protection of Industrial Property (Paris 
Convention). Accordingly, 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 31, 2013.
Margaret A. Focarino,
Commissioner for Patents, 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. 2013-31574 Filed 1-3-14; 8:45 am]
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