[Federal Register Volume 81, Number 245 (Wednesday, December 21, 2016)]
[Notices]
[Pages 93669-93671]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2016-30733]
-----------------------------------------------------------------------
DEPARTMENT OF COMMERCE
Patent and Trademark Office
[Docket No.: PTO-P-2016-0055]
Extension of the Extended Missing Parts Pilot Program
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Notice.
-----------------------------------------------------------------------
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 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 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. While the USPTO has not yet completed its
evaluation of the program, the number of participants in the program
over the past several years indicates that there may be sufficient
benefits to the patent community. Thus, the USPTO is extending the
Extended Missing Parts Pilot Program until January 2, 2018, to allow
the USPTO to continue its evaluation of the pilot program. The
requirements of the program have not changed.
DATES: Duration: The Extended Missing Parts Pilot Program will run
through January 2, 2018. Therefore, any certification and request to
participate in the Extended Missing Parts Pilot Program must be filed
on or before January 2, 2018. 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 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.
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]. Alternatively, mail may be
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: On December 8, 2010, after considering
written comments from the public, the USPTO changed the missing parts
examination procedures in certain nonprovisional applications by
implementing a pilot program (i.e., 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).
On September 6, 2016, the USPTO sought 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 pilot program to expire. See Request for Comments on
the Extended Missing Parts Pilot Program, 81 FR 61195 (Sept. 6, 2016),
1430 Off. Gaz. Pat. Office 269 (Sept. 27, 2016). The USPTO received a
total of two comments, and both comments appear to support the pilot
program. The two comments are available via the USPTO's Internet Web
site at https://www.uspto.gov/patent/laws-and-regulations/comments-public/comments-extended-missing-parts-pilot-program. While the USPTO
has not yet completed its evaluation of the pilot program, the increase
in the number of participants in the program over the past five years
indicates that there may be sufficient benefits to the patent
community. Thus, the USPTO is extending the Extended Missing Parts
Pilot Program until January 2, 2018, to allow the USPTO to continue its
evaluation of the pilot program.
The requirements of the program, which have not been modified, are
reiterated below. Applicants are strongly advised to review the pilot
program requirements before making a request to participate in 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).
The USPTO cautions all applicants that, in order to claim the
benefit of a prior provisional application, the statute
[[Page 93670]]
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). 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)
amended the provisions of title 35, United States Code, including 35
U.S.C. 119(e), to implement the Patent Law Treaty (PLT). See Public Law
112-211, Sec. 20-203, 126 Stat. 1527, 1533-37 (2012). In the
rulemaking to implement the PLT and title II of the PLTIA, the USPTO
provided that an applicant may file a petition under 37 CFR 1.78(b) 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 was effective on
December 18, 2013, and applies to any application filed before, on, or
after December 18, 2013. However, if a nonprovisional application is
filed outside the 12 month period from the date on which the
corresponding provisional application was filed, the nonprovisional
application is not eligible for participation in the Extended Missing
Parts Pilot Program, even though the applicant may be able to restore
the benefit of the provisional application by submitting a petition
under 37 CFR 1.78(b).
I. Requirements: 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 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 will
need to satisfy filing date requirements and publication requirements.
In the rulemaking to implement the PLT and title II of the PLTIA, the
USPTO 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 was effective on 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 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 18 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, the 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, the 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/sites/default/files/forms/aia0421.pdf. Information regarding EFS-Web is available on
the USPTO Web site at http://www.uspto.gov/patents-application-process/applying-online/about-efs-web.
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 Priority Mail Express[supreg] 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,
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 12-
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, the 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 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
[[Page 93671]]
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). The 12-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-application-process/checking-application-status/e-office-action-program. After 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 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) and
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 USPTO 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 was effective on 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 the 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, the 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 12-month priority period provided by the Paris
Convention for the Protection of Industrial Property (Paris
Convention). Accordingly, any foreign filings must, in most cases,
still be made within 12 months of the filing date of the provisional
application if the applicant wishes to rely on the provisional
application in the foreign-filed application or if protection is
desired in a country requiring filing within 12 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 15, 2016.
Michelle K. Lee,
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
[FR Doc. 2016-30733 Filed 12-20-16; 8:45 am]
BILLING CODE 3510-16-P