USPTO to Implement Missing Parts Pilot Program

The United States Patent and Trademark Office (USPTO) has announced plans to implement a Missing Parts Pilot Program which will effectively provide a 12-month extension to the existing 12-month provisional application period, providing applicants additional time to find financial help, evaluate a product’s worth in the marketplace or further develop the invention for commercialization.

This is achieved by a change to missing parts practice that will provide 12 additional months to perfect a non-provisional patent application.

Currently applicants have a one-year period from the filing date of a provisional application to file a corresponding non-provisional application in order to claim the benefit of the provisional application.

This change to missing parts practice would not alter this requirement but will provide applicants with more time to reply to a missing parts notice in a non-provisional application that claims the benefit of a provisional application, as well as delay the search and examination fees associated with the non-provisional application.

“In response to concerns from many inventors across the country, the USPTO is piloting a change in our missing parts practice to provide an additional 12 months for applicants to perfect a non-provisional patent application,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos.  “This would serve as a vehicle for inventors—at their option—to effectively have up to 24 months to make decisions regarding the significant investment of time and money required to take a non-provisional patent application forward.”

Extending the available time to determine if patent protection is needed not only benefits applicants but also the USPTO and the public by adding to the collection of prior art and removing non-provisional applications for which applicants have decided not to pursue examination from the USPTO’s workload.

To take advantage of the pilot program, an applicant/inventor must file a non-provisional application no later than 12 months after the filing date of the provisional application, as well as request a delay in payment of the search and examination fees.

The pilot program does 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, it may not be entitled to the benefit of right of priority to the provisional application.

The USPTO will provide applicants with a form for the certification and request to participate in the pilot program (PTO/SB/421) that will include educational information regarding domestic benefit claims, foreign filings, patent term adjustment effects, the need for a complete disclosure of the invention, potential increase in fees, and the benefits of submitting a complete set of claims.

Also See:

USPTO to Implement Inventor’s Oath or Declaration Provisions of the Leahy-Smith America Invents Act

U.S. Patent and Trademark Office Seeks Public Input on Proposed Fees

USPTO to Test New Post Final Rejection Option

USPTO Expands Patent Law School Clinic Certification Pilot Program

USPTO Launches Small Business Innovation Research Pilot Program