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USPTO Extended Missing Parts Pilot Program: Lay-A-Way Option Available to December 7, 2011

Note:  this article is not intended to provide any legal advice.

On December 8, 2010, the USPTO launched an “Extended Missing Parts” Pilot Program that permits applicants to delay some fees and some costs associated with patent formalities for another twelve months for original U.S. non-provisional applications that directly claim priority to a U.S. provisional application filed within the previous twelve months. To participate, an applicant’s patent application must include at least the following:

  • Basic USPTO filing fee and the Extended Missing Parts surcharge fee.  For small entities, the electronic filing fee is $82 (current as of December 8, 2010), and the surcharge fees are $130 for large entities and $65 for small entities.
  • A Certification and Request For Extended Missing Parts Pilot Program. See, http://www.uspto.gov/forms/sb0421.pdf.
  • Abstract in compliance with 37 CFR 1.72(b).
  • Specification pursuant to 35 U.S.C. 112, 1st paragraph.
  • At least one claim pursuant to 35 U.S.C. 112, 2nd paragraph.
  • At least one drawing that shows every feature of the invention specified in the claim(s).
  • Executed Oath/Declaration in compliance with 37 CFR 1.63.
  • English language translation and statement in compliance with 37 CFR 1.52(d) (if required).
  • Sequence listing in compliance with 37 CFR 1.821-1.825 (if applicable).

The Extended Missing Parts program enables an applicant to delay payment of some of the USPTO fees, and more importantly, for independent inventors, to potentially delay increased patent practitioner fees for detailed preparation of a nonprovisional application patent.   Many independent inventors need more than 12 months to raise capital, possibly develop a prototype or manufacture products to test in the stream of commerce, and/or to gain outside interest.  On a fundamental level, the more time that an inventrapreneur (inventor/entrepreneur) has, the more information the inventrapreneur has to identify if the invention might be commercially successful.  And, if the invention is in the development stages, the patent application that is filed earlier in time often doesn’t fully protect the earlier versions of the invention and often requires later filed continuation applications and/or continuation in part applications.   For many of these independent inventors, money is scarce and having additional time seems to enable an independent inventor to have more information about making an investment decision to pay to pursue an earlier filed patent application in the Extended Missing Parts program, or perhaps, to file a later Preliminary Amendment, a Continuation Application, and/or a Continuation-In-Part application that clarifies the earlier filed patent application and/or that includes potential new matter. Independent inventors who need to take “short cuts” might consider the Extended Missing Parts program for at least the following possible reductions in costs:

  • At the time of filing the Extended Missing Parts application, use informal figures.  This potentially delays payment to a draftsman to prepare formal figures (estimated at about $100+ per sheet), and instead opt to amend the application at 24 months with formal figures.
  • At the time of filing the Extended Missing Parts application, instruct a patent practitioner to not develop or write out all claims.  That is, the Extended Missing Parts program enables an applicant to file one claim ‒ the “omnibus claim” ‒ a claim to everything that is disclosed and that is patentable in the application.

While many patent practitioners may agree to delay preparation of formal figures, some patent practitioners may be hesitant to file an omnibus claim without informed consent of the applicant, and even then, the risks of filing an application under the Extended Missing Parts program might outweigh the benefits.  Early development of a claim set allows the applicant, the inventor(s) (who may be different from the applicant if the invention has been assigned), the patent practitioner and the USPTO (at the time of filing) to identify the potential targeted patentable subject matter.  More importantly, the claim set enables the patent practitioner and applicant to identify the inventors for the claimed patentable subject matter.  If there is an omnibus claim, then inventorship may be extremely difficult to determine.  On the other hand, most independent inventors as well as other small entities, tend to only have one or two potential inventors, so this may not be an issue for independent inventors who file to protect “closely held” inventions.  Since patentable subject matter is not targeted with filing an omnibus claim, any participating patent practitioner may want to discuss inventorship and consider naming all potential inventors at the time of filing the patent application in the Extended Missing Parts program.  Inventorship can then later be considered for amendment when the claims are amended which is consistent with current patent practice.

For more information about Extended Missing Parts Pilot Program, please see some of the questions and answers below.  And, hopefully stay tuned for more information from the USPTO’s IAC in the next few months.

Question: Are foreign applications eligible?
Answer
:
PCT applications and U.S. national stage applications are not eligible for the program.  Similarly, continuation and divisional applications are not eligible since these applications do not claim priority to a provisional application.

Question: How does it work?
Answer
:
If a qualified application is filed with a Certification and Request, the USPTO issues a Notice to File Missing Parts that sets a non-extendable 12 month deadline for paying the search fee, the examination fee, any excess claim fees, and the missing parts surcharge. Once those fees are paid, the application is placed in the examination queue based on its actual filing date. Thus, participating in the program should not negatively impact examination (unless the application might have been taken up for examination within those first 12 months). If those fees are not paid by the end of the 12 month period, the application is abandoned. The application is published in accordance with normal 18 month publication procedures, so no non-publication request can be filed.

Question: What happens if my application does not qualify?
Answer
:
If an unqualified application is filed with a Certification and Request, the USPTO will issue a Notice to File Missing Parts that sets only the standard extendable 2 month deadline for satisfying all requirements.

Question: What are the costs?
Answer
:
In addition to the missing parts surcharge, there are other costs to participating in this program:

  • Administrative costs of monitoring new deadlines to complete filing formalities.  One for the basic filing fee and executed inventors’ declaration and one for the search and examination fees as well as any Preliminary Amendment with formal figures and a more detailed claim set.
  • Potential USPTO patent fee increases.  In accordance with standard USPTO practice, the fees are paid at their current rate at the time of payment, rather than at the rate in effect at the time the Notice to File Missing Parts was issued. Thus, if the search and examination fees go up during the 12 month period, the higher fees will have to be paid.
  • Patent Term Adjustment consequences.  The Federal Register notice makes clear that applicants will be charged with “delay” under the Patent Term Adjustment (PTA) provisions, for paying the fees more than three months after a Notice to File Missing Parts is issued. For patents directed to pharmaceutical or biotechnology inventions, the costs of this potential loss of additional patent term might outweigh the benefits of the program.

Question: How long is the Extended Missing Parts program available?
Answer
:
The effective date of the Pilot Program is December 8, 2010, and it is set to run for one year, until December 7, 2011. The USPTO intends to use this time period to assess the Extended Missing Parts program and determine if it should be continued and/or modified.

*Note:  This article is not intended to provide legal advice.

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