Should the Extended Missing Parts Pilot Program be Extended Indefinitely?

Author: Shing-Yi (Cindy) Cheng Ph.D.
Editor: Stephanie M. Sanders

In its September 6th Federal Register Notice, the USPTO has requested public comment on whether it should make the Extended Missing Parts Pilot Program permanent. The USPTO implemented the Extended Missing Parts Pilot Program on December 8, 2010. Under the pilot program, an applicant can request a 12-month time period to pay certain government fees when filing a nonprovisional patent application. These fees are the

  • search fee,
  • examination fee,
  • any excess claims fees, and
  • the surcharge (for the late submission of the search fee and the examination fee).

To qualify for participation in the program, the following conditions must be satisfied:

  • the applicant must submit a certification and request to participate in the Extended Missing Parts Pilot Program with the nonprovisional application on filing using form PTO/AIA/421,
  • the application must be an original (i.e., not a Reissue) nonprovisional utility or plant application filed within the duration of the pilot program;
  • the nonprovisional application must directly and properly claim the benefit of a prior provisional application filed within the previous 12 months, and the specific reference to the provisional application must be in an ADS; and
  • the applicant must not have filed a nonpublication request.

If the applicant satisfies these conditions upon filing the nonprovisional application and the application is in condition for publication[1], the USPTO will send the applicant a Notice to File Missing Parts of Nonprovisional Application that sets a 12-month (non-extendable) time period to submit the fees that may be postponed. If an applicant files a timely reply to the Notice to File Missing Parts within the 12-month time period, the nonprovisional application will be placed in the examination queue based on the actual filing date of the nonprovisional application.

According to the USPTO, the Extended Missing Parts Pilot Program provides the following benefits:

Benefits to Applicants Benefits to USPTO and Public
Provides additional time for an applicant to determine if patent protection should be sought—at a relatively low cost—and allows applicants to focus their efforts on commercialization over a 24 month period (i.e., for the 12 months between filing a provisional application and a corresponding nonprovisional application, plus the additional 12 months afforded to postpone payment of fees under the pilot program).

 

Adds publications to the body of prior art and removes those nonprovisional applications for which applicants later decide not to pursue examination from the USPTO’s workload.

 

The Extended Missing Parts Pilot Program is currently set to expire on December 31, 2016.

Since the Extended Missing Parts Pilot Program has been in place for more than five years, the USPTO is currently requesting written public comments on whether the Extended Missing Parts Pilot Program should be made permanent. In particular, the USPTO is seeking input on the following:

  1. Have you participated in the Extended Missing Parts Pilot Program? If so, please discuss what aspects of the program you think are beneficial and what aspects are not.
  2. Please discuss why an applicant would be discouraged from participating in the Extended Missing Parts Pilot Program.
  3. Do you think the USPTO should make the Extended Missing Parts Pilot Program permanent? Why or why not?
  4. Please provide any other input that you would like the USPTO to consider in determining whether the Extended Missing Parts Pilot Program should be made permanent.

Written comments must be sent by electronic mail message or postal mail on or before November 7, 2016. Additional information can be found in the Federal Register Notice.

[1] To be in condition for publication, the following are required: (1) payment of the basic filing fee; (2) executed inventor oath(s) or declaration(s) or an ADS containing information about the inventive entity; (3) a specification; (4) an abstract; (5) drawings (if needed); (6) payment of any application size fee; (7) an English translation (if needed); and (8) a sequence listing (if applicable).

 

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