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USPTO Implements Pilot Program Effectively Allowing a 12-Month Extension to the Provisional Patent Application Period

12/10/2010
On December 8, 2010, the USPTO implemented a Missing Parts Pilot Program in which applicants who file a non-provisional application that claims benefit from a provisional application will receive an additional 12 months to pay the search, examination, and excess claim fees.  This program is designed to give applicants additional time to find financial help, evaluate a product’s worth in the marketplace or further develop the invention for commercialization.  The program does not change the requirement to file a complete non-provisional application within 12 months of the provisional filing date or the requirement to file an oath or declaration within two months (extendible) of a Missing Parts Notice. 

Please let us know if you would like more information about this program. 

(The following has been released by the USPTO):

Washington - The United States Patent and Trademark Office (USPTO) announced plans today 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 progam, 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.  http://www.uspto.gov/forms/sb0421.pdf

The USPTO will have training packages available on the USPTO website (www.uspto.gov < http://www.uspto.gov/ > ) and at least one webinar will be held in the near future. In addition, independent inventors can contact the Inventors Assistance Center at 800-786-9199 with questions.

More information can be found in today’s Federal Register notice: < http://edocket.access.gpo.gov/2010/pdf/2010-30822.pdf > .

For non-press inquiries, please contact PatentPractice@uspto.gov < mailto:PatentPractice@uspto.gov > or call 571-272-7701.