By Donald Zuhn --
Last week, the U.S. Patent and Trademark Office announced that it will be implementing an Extended Missing Parts Pilot Program that "will effectively provide a 12-month extension to the existing 12-month provisional application period, providing applicants additional time to find financial help, evaluate a product's worth in the marketplace or further develop the invention for commercialization." The Office initially sought comments regarding the program in April (see "USPTO Seeks to Effectively Double Provisional Application Period"). Under the Extended Missing Parts Pilot Program, the Office will modify its 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 -- such that 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.
Additional information regarding the pilot program and requirements for participation in the program have been provided in a notice published in the Federal Register (75 Fed. Reg. 76401). In this notice, the Office states that "[i]n view of the comments [the Office received in response to its prior notice], the USPTO is cautiously moving forward by implementing the proposed procedure as a pilot program." In addition, the Office indicated that it had received more than forty comments, and that "[t]he comments from those who will benefit from the extended time period were generally positive."
According to the notice, applicants wishing to participate in the pilot program must file a nonprovisional application within twelve months of the filing date of a provisional application, directly claim the benefit of the provisional application, and submit a certification and request to participate in the program with the nonprovisional application. The Office added the certification and request to participate requirement in response to the comments it received -- the initial proposal would have automatically applied the procedure to all applicants. The Office notes that the certification and request form (PTO/SB/421) will include "educational information regarding domestic benefit claims, foreign filings, patent term adjustment (PTA) effects, the need for a complete disclosure of the invention, potential increase in fees, and the benefits of submitting a complete set of claims." For example, with respect to the PTA effects of the program, Form PTO/SB/421 states that:
Any patent term adjustment (PTA) accrued by 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 applicant replies to a notice to file missing parts more than three months after the mailing date of the notice, the additional time that applicant takes to reply to the notice will be treated as an offset to any positive PTA accrued by the applicant.
Under the pilot program, nonprovisional applications will still be published according to the existing eighteen-month publication provisions. More importantly, the Office "advises" that:
[T]he extended missing parts period does not affect the twelve-month priority period provided by the Paris Convention for the Protection of Industrial Property. Thus, any foreign filings must still be made within twelve months of the filing date of the provisional application if applicant wishes to rely on the provisional application in the foreign-filed application or if protection is desired in a country requiring filing within twelve months of the earliest application for which rights are left outstanding in order to be entitled to priority.
Where an applicant participating in the program fails to pay the basic filing fee, provide an executed oath or declaration, or submit application papers that are in condition for publication, that applicant will be given a two-month (extendable) time period within which to supply those items. The pilot program will run until December 8, 2011 (although the Office may extend this date).