USPTO Implements Pilot Program Extending Provisional Application Period

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).

Comments

[Dan Feigelson]

You still need to file your PCT or foreign applications by the end of the first year, so what do you save here - a few hundred dollars on your US non-provisional filing? Anyone want to wager on how long it takes until someone misses their Paris Convention priority date thinking they have two years from their provisional filing? And if you're only filing in the USA, using this program precludes non-publication. I don't see how this program will be useful.

[Kevin E. Noonan]

Dan:

It isn't there to benefit applicants. It's there to benefit the Office. I am sure an application will not get into the queue of unexamined applications until the formalities are perfected or the 24--month period expires (whichever is later). So it will help Office statistics, not the patent system per se.

But maybe I'm just being cynical.

Thanks for the comment.

[Stan E. Delo]

I tend to agree with Dan F and Kevin that there is not a lot here for independents like myself to get very excited about. Like the Green patent pilot program, the PTO is not allowing the non-publication option with this program, which makes both of them a no-go in my situation. I don't plan to file any PCT apps in the near future, so why this big press to publish things to the world? Perhaps some sort of altruistic effort to share all of MY efforts with the rest of the world to harmonize things? What ever happened to the concept of the USPTO keeping applications confidential until after they have issued? If my application fails due to unforeseen prior art, at least I might be able to validly try again, instead of taking the core portion of my inventions and making it possible for billions to be able to see them with a few clicks.

For an extra 3 or $400 in search and examination fees, I will gladly go the extra mile to prevent the complete loss of my IP rights in the rest of the world for a few more years. Thanks for your interesting take on the matter Donald Z...

Stan~

[Huh?]

I agree with Dan, Kevin and Stan. It's hard to see much benefit to applicants. I'd be very surprised if more than a hundred of these are filed.

[patent litigation]

This program could help a few inventors at the margins, though generally I can't see that it effects significant change for innovators. It could, however, help the USPTO with its backlog, if enough inventors opt to drop patent prosecution during the additional 12-month pendency period. This initiative, along with David Kappos's other programs like the "green" patent fast-track and the 3-track plan, can conceivably help to whittle down the patent office's burdensome backlog.
http://www.ipdigit.eu/?p=552

[mike]

Also its not really clear in any of the documentation what the differences are between thw non-provisional patent application you submit to get the extra 12 months and the one you submit at the end of the 24 months.

Do you submit a properly written and complete non-provisional or do you just slap something together and submit the real deal after another 12 months. I cant seem to find any info about that online at all.

IE: Can you make changes to the first non-provisional with the one you submit at the 24 month mark?