By Donald Zuhn --
In a Federal Register notice published last week (76 Fed. Reg. 78246), the U.S. Patent and Trademark Office announced that the Extended Missing Parts Pilot Program that was implemented last year will be extended for another year. The pilot program "effectively provides 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." In particular, the pilot program modifies the Office's 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 can file a nonprovisional application with at least one claim within the 12-month statutory period after the provisional application has been 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.
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. In the Office's notice regarding the extension of the pilot program, the Office:
[C]autions all applicants that, in order to claim the benefit of a prior provisional application, the statute requires a nonprovisional application filed under 35 U.S.C. 111(a) to be filed within twelve 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.
The pilot program is not without its drawbacks; for example, the form for requesting participation in the program (PTO/SB/421) outlines the PTA effects of participation in the program, stating 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.
In addition, under the pilot program, nonprovisional applications are still published according to the existing eighteen-month publication provisions. Most importantly, the Office has advised applicants 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 -- i.e., comply with the requirements for participation in the program (which are essentially the requirements for publication of the application) -- the applicant is given a two-month (extendable) time period within which to supply those items. In the notice regarding the extension of the pilot program, the Office notes that applications that are not filed electronically will still be assessed a $400 additional fee (or $200 for small entities) pursuant to the Leahy-Smith America Invents Act, that this fee will be due within the two-month (extendable) time period to reply to the Notice to File Missing Parts of Nonprovisional Application, and that applicants will not be given the 12-month time period under the pilot program to pay this fee.
The pilot program has been extended until December 31, 2012.
For additional information regarding the pilot program, please see:
• "USPTO Implements Pilot Program Extending Provisional Application Period," December 13, 2010
• "USPTO Seeks to Effectively Double Provisional Application Period," April 4, 2010