[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]


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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.

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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 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