Providing Inventors More Time through the USPTO's Extended Missing Parts Pilot Program

The passage of S. 23, the America Invents Act in the Senate , has re-energized discussions about what a switch from a first-to-invent to a first-inventor-to-file system would mean for the innovation community, and particularly independent inventors. Provisional patent applications, already used widely by the independent inventor community, would become an even more important tool for inventors to claim a priority date for their invention under a first-inventor-to-file system. The cost to claim this priority date through a provisional patent application is extremely low-just $110 for small entities.

To make provisional patent applications even more helpful to inventors, the USPTO launched the "Extended Missing Parts Pilot Program" in December 2010. This program permits an applicant to request an additional twelve-month period to pay certain fees when an applicant files a non-provisional application and directly claims the benefit of a provisional application.

This pilot program was created based on the feedback that the USPTO received from independent inventors and universities who indicated that the provisional application period should be longer than 12 months to provide them with adequate time to make decisions regarding moving forward with a non-provisional application. The 12-month provisional period is provided specifically in the patent statute, so the USPTO is not able to change the period without congressional action. However, the USPTO found that the essence of these requests could be achieved by a change to the non-provisional application missing parts practice. Under this new pilot program, a change to missing parts practice effectively gives applicants up to 24 months to make decisions regarding the significant investment of time and money required taking a regular (non-provisional) patent application fully forward.

Under the pilot program, an applicant must file a non-provisional application no later than 12 months after the filing date of the provisional application, and request a delay in payment of the search and examination fees at the time the non-provisional application is filed. These steps will ensure they can take advantage of the additional 12 months to pay the search and examination fees in a non-provisional application. The USPTO is providing applicants with a form for the certification required, and to request a delay in payment of the search and examination fees (PTO/SB/421). Only newly filed, non-provisional applications directly claiming benefit of an earlier filed provisional application within the previous 12 months will be eligible for this pilot program.

The non-provisional application must satisfy the filing date requirements in order to receive a filing date and be entitled to the 12-month extension period. Non-provisional applications for which a 12-month extension is requested must have a written description clearly describing the invention so that someone with ordinary skill in the same technology can make and use it. The non-provisional application must directly claim benefit of a provisional application filed within the previous 12 months in the first sentence of the specification or in an application data sheet. The non-provisional application must have at least one claim, and drawings when necessary, to understand the invention. The applicant pays the basic filing fee at the time of filing, but not the search and examination fees. A "Notice to File Missing Parts" allows the applicant or inventor 12 months to pay the search and examination fees.

Both utility and plant patent applications are eligible to participate in this pilot. Utility applications can be filed either electronically, using EFS-Web, or in paper. Plant patent applications can only be filed in paper. Applications filed in paper may be mailed and USPS Express Mail is suggested, or may be hand-delivered to the USPTO. A non-publication request cannot be filed with the non-provisional application because the application will be published at the 18-month date from the earliest filing date claimed. Finally, filing date and publication requirements must be met in order to participate in the pilot program.

There are certain instances when a request may be denied. An application that is not a non-provisional utility or plant application claiming benefit of a provisional application filed as prescribed will not be eligible for this pilot program. Other instances for denial include:

• An application not entitled to a filing date,
• A certification and request submitted after the filing date of the non-provisional application,
• A non-provisional application not directly claiming benefit of a provisional application filed within the previous 12 months, and
• A non-publication request filed with the non-provisional application.

It is critical to remember that the pilot program will NOT change the requirement that an applicant must file a non-provisional application, foreign, or PCT application within 12 months of the filing date of a provisional application. If a non-provisional application, foreign, or PCT application is filed later than 12 months from the filing date of a provisional application and directly claims the benefit of the prior provisional application's filing date , it may not be entitled to the benefit of right of priority to the provisional application and it may negate the ability to obtain foreign patent rights. However, as described above, the new pilot will enable participating applicants to delay other application-related expenses for 12 more months.

In order to participate in the Extended Missing Parts Pilot Program you will need to follow these steps.

• File a non-provisional application (including a specification);
• Claim the benefit of the filing date of [referencing] a provisional application filed within the previous 12 months in the first sentence of the specification or in an Application Data Sheet (ADS);
• Include at least one claim;
• Include drawings if necessary; and
• Request a delay in payment of the search and examination fees at the time of the non-provisional application filing using form PTO/SB/421.

To better understand all that you need to know to effectively and knowledgeably use the new practice, the USPTO will be conducting at least one webinar and will have training packages available on uspto.gov. As always, independent inventors can contact the Inventors Assistance Center at 800-786-9199 with questions.

by John Calvert : Inventors Assistance Center