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

January 2, 2011 by · Comments Off
Filed under: Business, Inventor & Entrepreneur Updates, Patent Articles 

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.

New Rules Proposed on Gene Patenting

November 5, 2010 by · Comments Off
Filed under: law, Patent Articles 

The US Justice Department filed an Amicus Brief with the US Court of Appeals for the Federal Circuit that surprised many of the people that have been closely following the case (link to full brief here).  What surprised people was not that the brief was filed, but that it supported the party challenging the patents and goes against the policies of the US Patent and Trademark Office (USPTO) as well as decades of case law on the subject.

The Justice Department made the claim that human genes in their natural isolated state are unacceptable for patent protection because the genes are not human-made and thus are more akin to a discovery than an invention.  This brief has received its fair share of criticism.  While this will certainly have far-reaching effects on the bio-medical industry, it is not as far reaching as it may at first seem.  While the brief states that the Justice Department feels that patents shouldn’t be granted for isolated genes, many of the valuable patents dealing with genes actually refer to scientific processes or altered genes, which the Justice Department states should be able to receive patent protection.

Many of those who oppose the patenting of genes say that it will stifle the ability of new medical techniques, such as the ability of a person to have their personal genome read and reviewed for various diseases.  Proponents of gene patents claim that the ability to patent genes fosters innovation in the field by ensuring that those who do research will be compensated for their work.

Currently the USPTO is not following the opinion of the Justice Department as stated in their Amicus Brief, but with such a respected authority coming down on this side of the argument the industry is on very uncertain ground in their ability to receive patent protection in the coming years.

VIF Workshop on Search Techniques to Determine if Your Idea is Novel

June 3, 2010 by · Comments Off
Filed under: Inventor & Entrepreneur Updates, Patent Articles 

Workshop on Search Techniques to Determine if Your Idea is Novel

WHEN:   Wednesday, June 9, 2010, 6:30PM to 9PM
*registration to start at 6PM

WHERE:  James City County Library
7770 Croaker Road

Williamsburg, VA 23188
Kitzinger Community Room

COST:  $5 – members,  $10 – non-members

Now for some helpful links and lagniappe information for creative minds.

Did you know that the USPTO has tutorials on Prior Art Searching?  If not, try cutting and pasting these links into your browser.

http://www.uspto.gov/web/offices/ac/ido/ptdl/CBT/

http://www.uspto.gov/patents/process/search/index.jsp

Also, have your seen the attached Utility Patent Process chart?  This chart helps guide innovative minds and asks important questions like whether to seek worldwide protection or just in the United States.

http://www.uspto.gov/patents/process/index.jsp

Did you know that VIF is hosting a tradeshow on Saturday, October 23, 2010 with presentations by the USPTO, US Copyright Office and innovative minds to keep all of us inspired?  Stay tuned for more details to be launched on VIF’s Facebook Fan Page.

Green Technology Protection to Fast Track Success

April 11, 2010 by · Comments Off
Filed under: Inventor & Entrepreneur Updates, Patent Articles 

The United States Patent and Trademark Office (USPTO) has a pilot program that allows inventors to “speed up” the patent application process for examination of green technology inventions, including:

  • Greenhouse gas reduction and/or environmental quality;
  • Energy conservation, and
  • Development of renewable energy resources.

Currently, an application pertaining to environmental quality, or energy conservation, development of renewable energy resources or greenhouse gas reduction will not be advanced out of turn for examination unless it meets the requirements of the accelerated examination program.  Under the Green Technology Pilot Program, applications pertaining to environmental quality, energy conservation, development of renewable energy, or greenhouse gas emission reduction, are advanced out of turn for examination without meeting all of the current requirements of the accelerated examination program (e.g., examination support document).  The USPTO will accept only the first 3,000 petitions to make special in previously filed new applications, provided that the petitions meet the requirements set forth in the notice published on December 8, 2009, in the Federal Register.

If you have questions about the Green Technology Pilot Program, please feel free to email bambi@bfwpc.com or call 888-388-9614.

A copy of the Petition application is attached.  USPTO Petition to Accelerate Green Tech form sb0420

Patent & Intelletual Property Auction and Advance Sales Help Inventors Gauge the Price of Technology

Do you ever wonder what your patent is worth?  Or, if it is worthless?  If so, then you might want to check out some of the online patent auction sites to help you compare your invention with others.   One of the more respected online intellectual property auction provider is Ocean Tomo.  And, Ocean Tomo is now hosting its Spring 2010 auction of patents and other intellectual property assets with a live auction March 24 & 25, 2010 as well as private advanced sale options.

Some listings, have buy-it-now options, such as http://icapoceantomo.com/item-for-sale/smart-card-magnetic-recording listing 7,591,426 and 7,591,427 are listed for $200,000 USD.

And other listings do not have buy-it-now pricing, rather these patents will be sold during the auction or through private advanced bidding.  For example, NASA lists several different patent portfolios that include:

http://icapoceantomo.com/item-for-sale/digital-memory-storage-hub listing US Patent No. US11/935,572

http://icapoceantomo.com/item-for-sale/docking-system listing US Patent Nos. 6,778,180, 7,006,203, 7,174,077, 7,375,801, 6,227,495, 6,254,035, 6,658,329, and 6,888,476

http://icapoceantomo.com/item-for-sale/fiber-optic-grating-apparatus listing US Patent No. 6,873,762

http://icapoceantomo.com/item-for-sale/microresonator listing US Patent Nos. 6,028,693 and 6,885,779

Do you want to see other patents and intellectual property are for sale?  If so, then goto http://icapoceantomo.com/forsale/.