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USPTO Rule Change to Extend Provisional Patent to 24 Months

April 2, 2010 by · Comments Off
Filed under: Business, Inventor & Entrepreneur Updates 

Today, April 2, 2010, the Federal Register published the below Notice requesting comments on proposed changes to Missing Parts Practice.  This is the proposal that David Kappos has been talking about regarding extending the pendency period of provisional patent applications to 24 months.  Expect more conversation on this proposed rule change in the next few weeks.  For a recent blog, we recommend checking out Gene Quinn’s comments on IPWatchDog.

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[Federal Register Volume 75, Number 63 (Friday, April 2, 2010)]
[Notices]
[Pages 16750-16752]
From the Federal Register Online via the Government Printing Office [www.gpo.gov]
[FR Doc No: 2010-7520]

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DEPARTMENT OF COMMERCE

Patent and Trademark Office

[Docket No.: PTO-P-2010-0029]

Request for Comments on Proposed Change To Missing Parts Practice

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Request for comments.

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SUMMARY: The United States Patent and Trademark Office (USPTO), in
response to a number of requests to reduce the costs due one year after
filing a provisional application, is considering a change that would
effectively provide a 12-month extension to the 12-month provisional
application period (creating a net 24-month period). This change would
be implemented through the missing parts practice in nonprovisional
applications. Currently the missing parts practice permits an applicant
on payment of a surcharge to pay the up-front filing fees and submit an
executed oath or declaration after the filing of a nonprovisional
application within a two-month time period set by the USPTO that is
extendable on payment of extension of time fees for an additional five
months. Under the proposal, applicants would be permitted to file a
nonprovisional application with at least one claim within the 12-month
statutory period after the provisional application was filed, pay the
basic filing fee, and submit an executed oath or declaration. In
addition, the nonprovisional application would need to be in condition
for publication and applicant would not be able to file a
nonpublication request. Applicants would be given a 12-month period to
decide whether the nonprovisional application should be completed by
paying the required surcharge and the search, examination and any
excess claim fees due within that 12-month period. The proposal would
benefit applicants by permitting additional time to determine if patent
protection should be sought at a relatively low cost and by permitting
applicants to focus efforts on commercialization during this period.
The proposal would benefit the USPTO and the public by adding
publications to the body of prior art, and by removing from the USPTO's
workload those nonprovisional applications for which the applicants
have decided not to pursue examination. Importantly, the extended
missing parts period would not affect the 12-month priority period
provided by the Paris Convention for the Protection of Industrial
Property and, thus, any foreign filings would still need to be made
within 12 months of the filing date of the provisional application if
applicant wishes to rely on the provisional application in the foreign-
filed application.
    Comment Deadline Date: To be ensured of consideration, written
comments must be received on or before June 1, 2010.

ADDRESSES: Written comments should be sent by electronic mail message
over the Internet addressed to extended_missing_parts@uspto.gov.
Comments may also be submitted by mail addressed to: Mail Stop
Comments--Patents, Commissioner for Patents, P.O. Box 1450, Alexandria,
VA 22313-1450, marked to the attention of Eugenia A. Jones. Although
comments may be submitted by mail, the USPTO prefers to receive
comments via the Internet.
    The written comments will be available for public inspection at the
Office of the Commissioner for Patents, located in Madison East, Tenth
Floor, 600 Dulany Street, Alexandria, Virginia, 22314, and will be
available via the USPTO Internet Web site (address: http://www.uspto.gov). Because comments will be made available for public
inspection, information that is not desired to be made public, such as
an address or phone number, should not be included in the comments.

FOR FURTHER INFORMATION CONTACT: Eugenia A. Jones, Senior Legal
Advisor, Office of Patent Legal Administration, Office of the Associate
Commissioner for Patent Examination Policy, by telephone at (571) 272-
7727, or by mail addressed to: Mail Stop Comments--Patents,
Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450,
marked to the attention of Eugenia A. Jones.

SUPPLEMENTARY INFORMATION: Applicants have a one-year period from the
filing date of a provisional application to file a corresponding
nonprovisional application in order to claim the benefit of the
provisional application. Roughly fifty percent of provisional
applications are abandoned without the subsequent filing of
nonprovisional applications claiming their benefit. Many applicants
have expressed that a longer period of time to draft a complete set of
claims and pay fees would facilitate their efforts to determine whether
their inventions have commercial viability, and would enable more
informed and economically efficient decision making for applicants
considering filing nonprovisional applications claiming benefit of
prior provisional applications. Moreover, these same applicants have
expressed that they would be willing to commit to 18-month publication
of the invention disclosed in their provisional applications benefiting
from any extension period, as well as any nonprovisional applications
later claiming benefit of such provisional applications.
    In order to claim the benefit of a prior provisional application,
the statute requires a nonprovisional application filed under 35 U.S.C.
111(a) to be filed within 12 months after the date on which the
corresponding provisional application was filed. See 35 U.S.C. 119(e).
The proposed change would not alter this statutory requirement but
would allow applicants to more easily avail themselves of the benefits
of missing parts practice in nonprovisional applications.
    Under the current missing parts practice, if a nonprovisional
application filed under 35 U.S.C. 111(a) has been accorded a filing
date but does not include the basic filing fee, the search fee, the
examination fee, or an oath or declaration under 37 CFR 1.63, the USPTO
will send a missing parts notice and set a time period for the
applicant to submit the missing items and pay any required surcharge to
avoid abandonment. See 37 CFR 1.53(f). If excess claims fees, a
multiple dependent claim fee, and/or an application size fee are
required and such fees have not been paid, then these fees are also
required to be paid in response to a missing parts notice. Currently,
the time period set forth in a missing parts notice is two months with
extensions of time of up to five months under 37 CFR 1.136(a) being
available.
    The USPTO is requesting public comment on whether the missing parts
practice should be changed to provide applicants with an extended time
period to reply to a missing parts notice requiring fees in a
nonprovisional application filed under 35 U.S.C. 111(a) that claims the
benefit of a provisional application under the conditions that the
basic filing fee for the

[[Page 16751]]

nonprovisional application has been paid, an executed oath or
declaration under 37 CFR 1.63 has been filed, a nonpublication request
has not been filed, and the application is in condition for
publication. A benefit of such extension would be increased use of the
18-month publication system resulting from: (1) Additional
nonprovisional applications being filed that would not have been filed
without the ability to have 12 months to reply to a missing parts
notice with no extension of time fees being required; and (2)
nonprovisional applications being filed without a nonpublication
request so that applicant will be given the 12-month time period to
reply to a missing parts notice. A second benefit is added flexibility
for applicants who may otherwise be forced to expend resources
completing nonprovisional applications that may prove unnecessary given
an additional year of commercialization efforts. Providing a longer
time period to reply to a missing parts notice would give applicants
more time to ascertain the value of their inventions, thereby helping
applicants to decide whether to incur the additional costs associated
with pursuing patent rights. Applications not completed as
nonprovisional applications additionally benefit the USPTO and all
other users of the patent system, by removing unnecessary workload from
the agency. A third benefit is better targeting of applicant resources
to commercialization efforts at critical time periods, which efforts
can ultimately result in creation of jobs as well as new products and
services. This sequencing of effort in turn will lead to more efficient
and purposeful engagement with the USPTO for those applications that
are filed and completed as nonprovisional applications.
    The percentage of provisional applications that are subsequently
relied upon in a nonprovisional application has been declining over
time, leaving a higher percentage of provisional applications as
abandoned, unrelied upon applications. In 2008, 143,120 provisional
applications were filed. Thereafter, 72,792 nonprovisional or
international applications were filed that claimed the benefit of one
or more of the provisional applications filed in 2008 (or 50.8 percent
of the provisional applications). In 2007, 132,581 provisional
applications were filed. Thereafter, 75,330 nonprovisional or
international applications were filed that claimed the benefit of one
or more of the provisional applications filed in 2007 (or 56.8 percent
of the provisional applications). In 2006, 121,471 provisional
applications were filed. Thereafter, 73,136 nonprovisional or
international applications were filed that claimed the benefit of one
or more of the provisional applications filed in 2006 (or 60.2 percent
of the provisional applications). In 2005, 111,753 provisional
applications were filed. Thereafter, 68,511 nonprovisional or
international applications were filed that claimed the benefit of one
or more of the provisional applications filed in 2005 (or 61.3 percent
of the provisional applications). In 2004, 102,268 provisional
applications were filed. Thereafter, 63,146 nonprovisional or
international applications were filed that claimed the benefit of one
or more of the provisional applications filed in 2004 (or 61.7 percent
of the provisional applications). For provisional applications filed
from 1998 to 2003, the percentage of provisional applications relied
upon in a subsequent application ranged from 61.2 to 63.2 percent.
    Currently, some applicants take advantage of the missing parts
practice to file nonprovisional applications without complete claim
sets by omitting an executed oath or declaration or failing to pay the
search and examination fees up front. Such filings result in a notice
to file missing parts which must be replied to in order to complete the
application prior to docketing for examination. A subset of these
applicants then file a continuing application claiming the benefit of
the first-filed nonprovisional application that claimed the benefit of
the prior provisional application, rather than a reply to the notice to
file missing parts, in order to effectively extend the time period to
complete the nonprovisional application. The current proposal to
provide a time period of twelve months for an applicant to reply to a
missing parts notice under certain conditions seeks to provide
applicants with a streamlined alternative to this practice by
eliminating the need to refile the application and to pay significant
extension of time fees.
    Similarly, applicants who file several nonprovisional patent
applications based on a number of provisional applications may fail to
have sufficient focus on what they deem to be their most important
applications. In addition, by failing to prioritize USPTO efforts on
the nonprovisional applications deemed most important by applicants,
greater delay in the processing and examination of all nonprovisional
applications by the USPTO occurs. The current proposal would help
applicants focus on their most important applications and conserve
USPTO resources.
    In order for an applicant to be provided a 12-month (non-
extendable) time period to reply to a missing parts notice, the
applicant would need to satisfy the following conditions: (1) The
nonprovisional application filed under 35 U.S.C. 111(a) must claim the
benefit of a prior-filed provisional application; (2) the basic filing
fee must have been paid (in the nonprovisional application); (3) an
executed oath or declaration under 37 CFR 1.63 must have been filed;
(4) applicant must not have filed a nonpublication request, or the
applicant must have filed a request to rescind a previously filed
nonpublication request; and (5) the application must be in condition
for publication as provided in 37 CFR 1.211(c). After an applicant
timely replies to the missing parts notice within the 12-month time
period and the nonprovisional application is completed, the
nonprovisional application would be placed in the examination queue
based on the actual filing date of the nonprovisional application.
Therefore, there would be no change made in the order in which
applications are examined as a result of the current proposal.
    An applicant who has filed a provisional application with a
complete disclosure and high quality application papers (e.g., papers
that satisfy the requirements of 37 CFR 1.52) would, in most cases, be
able to file a nonprovisional application with little additional effort
and expense. In addition to the requirements of a provisional
application, a nonprovisional application requires at least one claim
and an executed oath or declaration under 37 CFR 1.63. Thus, for
example, where a provisional application was filed without any claims,
the applicant would need to: (1) Draft at least one claim and file the
nonprovisional application using essentially a copy of the provisional
application papers (e.g., specification and drawings), with minor
revisions to add the claim(s) at the end of the specification and the
reference to the prior-filed provisional application in the first
sentence of the specification; (2) submit an executed oath or
declaration under 37 CFR 1.63; and (3) submit the basic filing fee. A
preliminary amendment adding additional claims could be submitted along
with the reply to the missing parts notice. Currently, the small entity
basic filing fee for a utility application is $165.00, or $82.00 if
filed electronically using the USPTO's electronic filing system (EFS-
Web). The non-small entity basic filing fee for a utility application
is $330.00. To

[[Page 16752]]

complete the application for examination, the remainder of the filing
fees and the required surcharge ($65.00 for small entities and $130.00
for other applicants) would be due within the 12-month time period set
in the missing parts notice. Thus, an additional $445.00 for small
entities and $890.00 for other applicants would be due for payment of
the surcharge and the search and examination fees (plus any required
excess claims fees and application size fee). Furthermore, the
publication fee would not be required until mailing of a notice of
allowance (unless early publication is requested).
    Applicants are reminded that the disclosure of an invention in a
provisional application should be as complete as possible because the
claimed subject matter in the later-filed nonprovisional application
must have support in the provisional application in order for the
applicant to obtain the benefit of the filing date of the provisional
application. Applicants are also advised that the extended missing
parts period would not affect the 12-month priority period provided by
the Paris Convention for the Protection of Industrial Property (Paris
Convention) and, thus, any foreign filings would still need to be made
within 12 months of the filing date of the provisional application if
applicant wishes to rely on the provisional application in the foreign-
filed application.
    As discussed, the USPTO would require the nonprovisional
application to be in condition for publication. In addition, the USPTO
would publish the application promptly after the expiration of eighteen
months from the earliest filing date for which a benefit is sought.
Thus, if there are informalities in the application papers that need
correction for the application to be in condition for publication (such
as the specification pages contain improper margins or line spacing or
the drawings are not acceptable because they are not electronically
reproducible), the USPTO would still send a missing parts notice that
sets a two-month (extendable) time period (not the 12-month extended
missing parts period) for the applicant to correct the informalities as
well as submit any missing items or required fees.
    The USPTO is also considering offering applicants an optional
service of having an international style search report prepared during
the 12-month extended missing parts period. The optional service would
provide the applicant with information concerning the state of the
prior art and may be useful in determining whether to complete the
application and the claims to pursue if the application is completed.
The search report that would be prepared would be similar to the search
report that is prepared for international applications. See PCT Rule 43
and Manual of Patent Examining Procedure (MPEP) Sec.  1844. The fee for
this service would be set, through rule making, to recover the
estimated average cost of providing the service and is anticipated to
be consistent with the current cost of conducting an international
search. See 35 U.S.C. 41(d)(2) and 37 CFR 1.445(a)(2). It should be
noted that if applicant decides to file a reply to the missing parts
notice and complete the nonprovisional application after having
received such a search report, the applicant would still be required to
pay the search fee (set forth in 35 U.S.C. 41(d)(1) and 37 CFR 1.16)
with the reply to the missing parts notice, and the examiner would
still conduct the search that is currently done as part of the
examination of nonprovisional applications. See MPEP Sec. Sec.  704.01
and 904-904.03. This is analogous to international applications where
applicant is required to pay the search fee set forth in 37 CFR
1.445(a)(2) and the USPTO will conduct a search and prepare an
international search report when the USPTO is the International
Searching Authority; and then, after the international application
enters the national stage in the United States, applicant is required
to pay the national stage search fee set forth 37 CFR 1.492(b) and the
examiner will conduct a search as part of the examination of the
application.
    Any patent term adjustment (PTA) accrued by an 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 an applicant replies to a notice to file missing
parts more than three months after mailing of the notice, the
additional time would be treated as an offset to any positive PTA that
will be accrued by applicant. The USPTO envisions that no change would
be made to the current regulations (including the patent term
adjustment regulations) except to provide for the fee for the optional
service of an international style search report, if the USPTO decides
to implement the proposed change to the missing parts practice.
    The USPTO is publishing this request for comments to gather public
feedback on, and to determine the level of interest in, the proposed
change to missing parts practice as well as the optional service to
provide a search report during the extended missing parts period
discussed in this notice. Comments or suggestions are solicited on
whether or how the USPTO should revise the missing parts practice.

    Dated: March 29, 2010.
David J. Kappos,
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
[FR Doc. 2010-7520 Filed 4-1-10; 8:45 am]
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