IP Update, Vol. 8, No. 3 (13 December 2010)

Editors: Marc S. Weiner, Esq. and Nicholas P. Godici

USPTO Announces a New Pilot Program to Delay Response to a Missing Parts Requirement for Up to 12 Months

The USPTO has announced a new "Extended Missing Parts Pilot Program". This pilot program allows applicants to request up to a 12-month delay before responding to a Notice of Missing Parts after filing a non-provisional application that claims the benefit of a prior provisional application. The program allows applicants additional time (at a relatively low cost) to determine if patent protection should be sought while the USPTO benefits by adding publications to the body of prior art and reducing workloads when the applicant decides later not to pursue examination.

The "Extended Missing Parts Pilot Program" is only available if requested at the time of filing of a non-provisional application that claims the benefit of an earlier filed provisional application. The non-provisional application must be filed within 12-months of the filing of the provisional application, however under the new pilot program, applicants may file without paying certain fees and request up to a 12-month delay to respond to the Notice of Missing Parts that requires the payment of the missing fees.

The following conditions are required to be eligible for this new pilot program:

1. The applicant must submit a certification and request to participate in the pilot program. The USPTO has provided a form PTO/SB/421 for this purpose.

2. The non-provisional application must be a utility or plant application filed under 35 U.S.C. § 111(a).

3. The non-provisional application must directly claim the benefit of a prior provisional application under 35 U.S.C. § 119(e) and 37 CFR 1.78.

4. The application may not request nonpublication of the application.

5. The nonprovisional application must include the basic filing fee (not the search, examination, or any excess claim fees); an executed oath or declaration; a specification in compliance with 37 CFR 1.52; an abstract; drawings (if applicable); any English language translation that may be required; and a sequence listing (if applicable).

The USPTO warns that the "Extended Missing Parts Pilot Program" does not change the statutory requirement to file a nonprovisional application within twelve months after the filing date of a provisional application. Also this program does not affect the twelve month priority period provided by the Paris Convention in which to file foreign applications. Further, any Patent Term Adjustment (PTA) accrued for USPTO delays will be offset by a reduction for failing to respond to a Notice from the Office within three months. Thus any positive PTA can be reduced by up to nine months if applicants take full advantage of the 12-month delay.

The "Extended Missing Parts Pilot Program" is available as of December 8, 2010.

For more information, please see the Federal Register Notice and form PTO/SB/421.

Summary provided by Nicholas P. Godici

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