Dec 201029

Patent Office Gives Provisional Filers Extra 12 Months to Pay Certain Fees When Filing Non-Provisional Application

The United States Patent and Trademark Office (USPTO) has recently implemented the Extended Missing Parts Pilot Program (Pilot Program) which allows an applicant to request a 12-month time period to pay certain fees and to reply to a Notice to File Missing Parts of a non-provisional application.  The Pilot Program provides applicants with additional time to determine whether patent protection should be sought by permitting the applicants to focus their efforts on commercialization of their invention during this 12-month period.  The USPTO notes that the Pilot Program will benefit the public by adding publications to the body of prior art as well as reduce USPTO workload by removing those non-provisional applications for which the applicant later decides not to pursue examination. 

Under the Pilot Program, the applicant must:

– File a non-provisional patent application within twelve months of the filing date of a provisional application;
– Directly claim the benefit of the provisional application;
– Submit a certification and request to participate in the Extended Missing Parts Pilot Program;
– Allow the application to publish. 

If the requirements of the Pilot Program are met, the applicant will be given a 12-month period to decide whether the non-provisional application should be completed.  The applicant may then pay the search fee, examination fee, any excess claims fee as well as a surcharge ($65 for small entities; $130 for large entities) within at anytime within the 12-month period. 

Those applications which participate in the Pilot Program will still be published under the existing 18-month publication provisions.  Therefore, the applicant is to also submit the basic filing fee, executed Declaration and application papers that are in condition for publication when filing the application, along with the request to participate in the program.  If these fees or papers are not submitted with the application, the applicant will need to submit these items within a two-month (extendable) time period. 

As for a couple other notable provisions, it is important to point out that the extended missing parts period does not affect the 12-month priority period provided by the Paris Convention.  Accordingly, any foreign filings must still be made within twelve months of the filing date of the provisional application if the applicant wishes to rely on the provisional application in the foreign-filed application. 

One potential drawback to the Pilot Program is that any patent term adjustment accrued by an applicant based on USPTO administrative delays will be offset by a reduction for failing to reply to the Notice to File Missing Parts within three months.  Therefore, if an applicant replies to a Notice to File Missing Parts more than three months after mailing of the Notice, the additional time will be treated as an offset to any positive patent term adjustment that has accrued by the applicant. 

More details of the Extended Missing Parts Pilot Program can be found here.