On December 8, 2010, the United States Patent and Trademark Office published a Federal Register Notice announcing the launch of the “Extended Missing Parts Pilot Program.” This program permits an applicant request of an additional twelve-month period to pay certain fees when an applicant files a nonprovisional application and directly claims the benefit of the provisional application.
This pilot program was created from the feedback that the USPTO received from independent inventors and universities who indicated that the provisional application period should be longer than 12 months to provide them with adequate time to make decisions regarding moving forward with a non-provisional application. The 12 month provisional period is provided specifically in the patent statute, so the USPTO is not able to change the period without Congressional action. However, the USPTO found that the essence of these requests could be achieved by a change to the non-provisional application missing parts practice. Under this new pilot program, a change to missing parts practice would effectively give applicants up to 24 months to make decisions regarding the significant investment of time and money required taking a regular (non-provisional) patent application forward.
Under the pilot program, an applicant must file a non-provisional application no later than 12 months after the filing date of the provisional application, and request a delay in payment of the search and examination fees at the time the non-provisional application is filed. These steps will ensure they can take advantage of the additional 12 months to pay the search and examination fees in a non-provisional application. The USPTO is providing applicants with a form for the certification required, and to request a delay in payment of the search and examination fees (PTO/SB/421). Only newly filed, non-provisional applications directly claiming benefit of an earlier filed provisional application within the previous 12 months will be eligible for this pilot program
A non-provisional application with at least one claim must be filed within 12 months of the provisional application date to claim benefit of the provisional date.
The non-provisional application specification cannot have content added after filing and any new claims added must be fully supported by the specification.
Both utility and plant patent applications are eligible to participate in this pilot. Utility applications can be filed either electronically, using EFS-Web, or in paper. Plant patent applications can only be filed in paper. Applications filed in paper may be mailed (USPS Express Mail is suggested) or may be hand-delivered to the USPTO. A non-publication request cannot be filed with the non-provisional application because the application will be published at the 18-month date from the earliest filing date claimed. Finally, filing date and publication requirements must be met in order to participate in the pilot program.
There are certain instances when a request may be denied. An application that is not a non-provisional utility or plant application claiming benefit of a provisional application filed as prescribed will not be eligible for this pilot program. Other instances for denial include: an application not entitled to a filing date, a certification and request submitted after the filing date of the non-provisional application, a non-provisional application not directly claiming benefit of a provisional application filed within the previous 12 months, and a nonpublication request filed with the non-provisional application.
It is critical to remember that the pilot program will NOT change the requirement that an applicant must file a non-provisional application, foreign, or PCT application within 12 months of the filing date of a provisional application. If a non-provisional application, foreign, or PCT application is filed later than 12 months from the filing date of a provisional application, it may not be entitled to the benefit of right of priority to the provisional application and it may negate the ability to obtain foreign patent rights. However, as described above, the new pilot will enable participating applicants to delay other application-related expenses for 12 more months.
In order to participate in the Extended Missing Parts Pilot Program you will need to follow these steps:
• File a non-provisional application (including a specification);
• referencing a provisional application filed within the previous 12 months in the first sentence of the specification or in an Application Data Sheet (ADS);
• include at least one claim;
• include drawings if necessary; and
• request a delay in payment of the search and examination fees at the time of the non-provisional application filing using form PTO/SB/421.
To better understand all that you need to know to effectively and knowledgably use the new practice, the USPTO will be conducting at least one webinar and will have training packages available on the USPTO website (www.uspto.gov). As always independent inventors can also contact the Inventors Assistance Center (1-800-786-9199) with questions.