[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]
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