[Federal Register Volume 81, Number 172 (Tuesday, September 6, 2016)]
[Notices]
[Pages 61195-61196]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2016-21306]


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DEPARTMENT OF COMMERCE

 Patent and Trademark Office

[Docket No. PTO-P-2016-0027]


Request for Comments on the Extended Missing Parts Pilot Program

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) has 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 is currently set to expire on December 31, 2016. 
The USPTO is seeking public comment 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.

DATES: Comment Deadline Date: Written comments must be received on or 
before November 7, 2016.

ADDRESSES: Comments should be sent by electronic mail message over the 
Internet addressed to: [email protected]. Comments may 
also be submitted by postal 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 postal mail, the Office 
prefers to receive comments by electronic mail message over the 
Internet in order to facilitate posting on the USPTO's Internet Web 
site. Electronic comments are preferred to be submitted in plain text, 
but also may be submitted in ADOBE[supreg] portable document format or 
MICROSOFT WORD[supreg] format. Comments not submitted electronically 
should be submitted on paper in a format that facilitates convenient 
digital scanning into ADOBE[supreg] portable document format.
    The comments will be available for public inspection at the Office 
of the Commissioner for Patents, currently located in Madison East, 
Tenth Floor, 600 Dulany Street, Alexandria, Virginia 22314. Comments 
also will be available for viewing via the USPTO's Internet Web site 
(http://www.uspto.gov). Because comments will be made available for 
public inspection, information that the submitter does not desire to 
make public, such as an address or phone number, should not be included 
in the comments. It would be helpful to the USPTO if comments included 
information about: (1) The name and affiliation of the individual 
responding; and (2) an indication of whether the comments represent 
views of the respondent's organization or are the respondent's personal 
views.

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, Legal Advisor, Office of Patent Legal 
Administration, Office of the Deputy Commissioner for Patent 
Examination Policy, by telephone at (571) 272-7747.

SUPPLEMENTARY INFORMATION: 

I. Background

    On December 8, 2010, after considering written comments from the 
public, the USPTO implemented 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). 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 December 
31, 2016, to allow the USPTO time to seek public comment on whether the 
Extended Missing Parts Pilot Program offers sufficient benefits to the 
patent community for it to be made permanent. See Extension of Extended 
Missing Parts Pilot Program, 80 FR 80325 (Dec. 24, 2015), 1422 Off. 
Gaz. Pat. Office 192 (Jan. 19, 2016). Since the Extended Missing Parts 
Pilot Program has been in place for more than five years, it is now a 
good opportunity to seek public comment on whether the program offers 
sufficient benefits to the patent community for it to be made permanent 
or whether the USPTO should permit the program to expire.
    Summary of the Extended Missing Parts Pilot Program: 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

[[Page 61196]]

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 must 
satisfy filing date requirements and publication requirements. If the 
application submitted on filing does not meet the requirements for 
publication, or if the application is filed without any claims, the 
Office of Patent Application Processing will issue an appropriate 
notice setting a two-month (extendable) time period within which to 
respond. The Extended Missing Parts Pilot Program does not change the 
two-month time period set forth in any such notice. 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.
    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). If 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 additional discussion, 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), and Extension of the Extended Missing Parts Pilot 
Program, 80 FR 80325 (Dec. 24, 2015), 1422 Off. Gaz. Pat. Office 192 
(Jan. 19, 2016).

II. Request for Public Comments

    The USPTO is requesting written public comments on whether the 
Extended Missing Parts Pilot Program should be made permanent. The 
USPTO seeks input from the public on the following:
    1. Have you participated in the Extended Missing Parts Pilot 
Program? If so, please discuss what aspects of the program you think 
are beneficial and what aspects are not.
    2. Please discuss why an applicant would be discouraged from 
participating in the Extended Missing Parts Pilot Program.
    3. Do you think the USPTO should make the Extended Missing Parts 
Pilot Program permanent? Why or why not?
    4. Please provide any other input that you would like the USPTO to 
consider in determining whether the Extended Missing Parts Pilot 
Program should be made permanent.

    Dated: August 29, 2016.
Russell Slifer,
Deputy Under Secretary of Commerce for Intellectual Property and Deputy 
Director of the United States Patent and Trademark Office.
[FR Doc. 2016-21306 Filed 9-2-16; 8:45 am]
 BILLING CODE 3510-16-P