By
Donald Zuhn —

On
Friday, the U.S. Patent and Trademark Office published a notice
in the Federal Register (75 Fed. Reg. 16750) seeking comments regarding a proposed change in practice
that would, according to Office press release,
effectively provide a 12‑month
extension to the existing 12-month provisional application period.  In particular, the Office is seeking
comments regarding a change from the current missing parts practice — which permits
an applicant to pay the filing fees and submit an
executed oath or declaration after the filing of a nonprovisional application
within a two-month time period that is extendable for an additional five months
on payment of extension of time fees — to a modified practice in which applicants
would file a nonprovisional application with at least one claim within the
12-month statutory period after the provisional application was filed (as well
as pay the basic filing fee, submit an executed oath or declaration, and not file
a nonpublication request) and then be given a 12-month period within which to decide
whether the nonprovisional application should be completed by paying the
required surcharge and the search, examination, and any excess claim fees.

According
to the Office's notice, the proposed change is a "response to a number of
requests to reduce the costs due one year after filing a provisional
application."  In addition to
the requirements listed above, the notice states that the nonprovisional
application filed at the 12-month date would need to be in condition for
publication (as nonprovisional applications would still be published 18 months from
the earliest filing date for which a benefit is sought).  In describing the benefits of the
proposed change, the Office suggests that:

The proposal would benefit 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 proposal would benefit 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 the applicants have decided
not to pursue examination.

The
Office, however, also warns that:

[T]he extended missing parts
period would not affect the 12-month priority period provided by the Paris
Convention for the Protection of Industrial Property and, thus, any foreign
filings would still need to be made within 12 months of the filing date of the
provisional application if applicant wishes to rely on the provisional
application in the foreign-filed application.

Interestingly,
the Office notes that under current provisional practice, approximately 50% of all
provisional applications are abandoned without the subsequent filing of
nonprovisional applications claiming their benefit.  The Office also notes that the number of abandoned
provisional applications has been increasing over time (see chart below, which was prepared using data presented in the
notice):

The Office points out that:

Many applicants have expressed that a
longer period of time to draft a complete set of claims and pay fees would
facilitate their efforts to determine whether their inventions have commercial
viability, and would enable more informed and economically efficient decision
making for applicants considering filing nonprovisional applications claiming
benefit of prior provisional applications.

The Office also points out that in order to extend the time period for completing a
nonprovisional application, some applicants choose to file a continuing
application claiming the benefit of a first-filed nonprovisional application
rather than reply to a notice of missing parts mailed on that first-filed
nonprovisional application.  Thus,
the Office's proposal "seeks to provide applicants with a streamlined
alternative to this practice by eliminating the need to refile the application
and to pay significant extension of time fees."  The notice indicates that nonprovisional
applications for which completion was delayed would be placed in the
examination queue based on their actual filing date, and therefore, there would
be no change made in the order in which applications are examined as a result
of the Office's proposed change to missing parts practice.

With
respect to the impact of the Office's proposal on
patent term adjustment (PTA) calculations, the notice states that:

Any
patent term adjustment (PTA) accrued by an applicant based on certain
administrative delays by the USPTO is offset by a reduction for failing to
reply to a notice by the USPTO within three months.  See 37 CFR
1.704(b).  Thus, if an applicant
replies to a notice to file missing parts more than three months after mailing
of the notice, the additional time would be treated as an offset to any
positive PTA that will be accrued by applicant.

Under
the proposed change in missing parts practice, a missing parts notice would be
issued — where the requirements discussed above are met — providing the applicant with a 12-month non-extendable period of reply rather than a 2-month
extendable period of reply.  Thus,
applicants choosing to wait the full 12 months to reply would be docked for 9
months of applicant delay.

In
addition to the change in missing parts practice, the Office is also considering
offering an optional service of preparing an international style search report
during the 12-month extended missing parts period.  This proposed search would not replace, but would only
supplement, the search that is currently done as part of the examination of
nonprovisional applications.

According
to the notice, comments must be submitted on or before June 1, 2010 to be
considered.  Comments should be
submitted by e-mail to extended_missing_parts@uspto.gov
(which the Office prefers) or by regular 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.