Effective December 8, 2010, a new pilot program announced by the USPTO allows applicants to delay payment of certain fees for nonprovisional applications that properly claim priority to an earlier-filed provisional application. Under the optional Extended Missing Parts Pilot Program (Pilot Program), applicants who pay the basic filing fee will receive a Notice to File Missing Parts providing a 12-month (non-extendable) period for submitting required search, examination, and surcharge fees. The basic filing fee for utility applications is currently $330 ($165 for small entities) and the search/examination/surcharge fees are $540/$220/$130 ($270/$110/$65 for small entities).
The Pilot Program is set to run for 12 months from its effective date, and no limit has been set on the number of applications that may participate. The USPTO’s announcement and rules can be seen in the December 8, 2010 Federal Register notice (Vol. 75, No. 235) (Docket No.: PTO-P-2010-0071) (available at http://edocket.access.gpo.gov/2010/pdf/2010-30822.pdf).
Because of numerous potential pitfalls with the Pilot Program (discussed below), those interested in taking advantage of the Pilot Program are strongly encouraged to carefully evaluate risks and consult with experienced IP attorneys.
Background and Benefits Described by the USPTO
In its announcement of the Pilot Program, the USPTO cited inventor concerns that the 12-month period for converting provisional applications was often inadequate for determining whether to continue pursuing patent protection. Specifically, inventors noted that 12 months was insufficient for securing financing, evaluating invention worth, or commercializing inventions.
As the 12-month provisional conversion period is defined by statute, a change would have required legislative action. Instead, the USPTO explored modifying “missing parts” practice to accommodate these concerns. The USPTO requested comments from the public on such a proposal and implemented the Pilot Program on December 8, 2010.
The USPTO describes three particular benefits of the Pilot Program for inventors, the USPTO, and the public.
- Time—“More time for applicants to ascertain the value of their inventions and focus on commercialization efforts”
- More publications—“Increased use of the eighteen-month publication system”
- Reduced workload—“Removal of applications from the USPTO’s workload”
Because the Pilot Program is optional, applicants wishing to participate must take certain additional steps over regular filing of nonprovisional applications, including submitting a certification and request and NOT filing a nonpublication request. All steps are outlined below.
- Submit Certification and Request. Applicants must submit a signed certification and request (form PTO/SB/421) to participate in the Pilot Program. Form PTO/SB/421, available at www.uspto.gov/forms/sb0421.pdf, also includes acknowledgements, including:
- Enablement and written description requirements under 35 U.S.C. 112
- Foreign or international applications must still be filed within 12 months of the filing date of the provisional application
- Patent term adjustment (PTA) time will be offset for failing to reply within three months of a notice to file missing parts
Concerns related to these acknowledgements are discussed in the section that follows.
- File Nonprovisional Application. The nonprovisional application (plant or utility) must be filed during the Pilot Program (i.e., between December 8, 2010 and December 7, 2011). Design, provisional, national stage, international, and reissue applications, as well as reexamination proceedings, are excluded from the Pilot Program.
- Properly Claim Priority to Provisional. The nonprovisional application must be filed within 12 months of the filing of a provisional application and directly claim priority to the provisional application. Reference to the provisional application must be included in the first sentence of the specification following the title, or in an application data sheet.
- Not Submit a Nonpublication Request. To participate in the Pilot Program, applicants must not file a nonpublication request.
- Satisfy Filing Date and Publication Requirements. Applicants must submit the basic filing fee (currently $330 or $165 for small entities), as well as the following complying documents: executed oath or declaration, specification including at lease one claim, abstract, drawings, application size fee, any required English translation, and any required sequence listing.
If publication requirements are not met, applicants will receive a Notice to File Missing Parts setting forth a two-month (extendable) period for reply.
Further details of requirements for the Pilot Program can be seen in the Federal Register notice cited above.
Not a “De Facto 24-Month Provisional”
The Pilot Program has been referred to by many in the patent community as a de facto 24-month provisional program. This label is misleading, and applicants are cautioned against viewing the Pilot Program as such.
It is true that the Pilot Program can afford careful applicants benefits similar to those of provisional applications, particularly by maintaining rights in a provisional application for a relatively small fee. But, there are many hidden traps associated with the Pilot Program that could cause unintentional loss of rights for unwary applicants, including enablement and written description requirements, foreign and international filing requirements, publication, and loss of patent term adjustment time.
Enablement and Written Description Requirements. Any claim presented must be fully supported by the specification (i.e., the specification must meet the written description requirements of 35 U.S.C. § 112 ¶ 1). While this requirement is common to all applications, a problem of illusory value for provisional applications may be exacerbated for ill-advised applicants. For example, an applicant who decides to delay payment of search and examination fees may also forgo updating his/her disclosure (and associated legal fees). Claims first presented 24 months after filing (that are the result of further development and commercialization efforts during this period) may not be entitled to priority if support is not found in the provisional application as originally filed.
Foreign and International Protection. The Pilot Program has no effect on (i.e., does not extend) the timeframe in which applicants may file for foreign patent rights and claim benefit to a provisional application. Foreign and international applications claiming benefit of a provisional application must still generally be filed within 12 months of filing the provisional. Thus, any applicant that takes full advantage of the Pilot Program (i.e., 12-month provisional life and 12-month reply period), without having filed a foreign or international application, could forfeit the opportunity for foreign patent rights.
Consequences of Publication. To participate in the Pilot Program, applicants cannot submit a nonpublication request. Accordingly, nonprovisional applications will publish 18 months from filing of the earliest application to which the nonprovisional claims priority. This differs significantly from provisional applications, which go unpublished if no action is taken by the applicant.
Because of publication, applicants should be aware of at least two concerns if using the Pilot Program to delay a decision on whether to pay search and examination fees. First, under certain circumstances, publication of an application filed under the Pilot Program could serve as a bar under 35 U.S.C. § 102(b) to an application subsequently filed by the applicant. Second, publication of the application could result in loss of trade secret protection for disclosed subject matter, which might otherwise be available under applicable state laws.
Loss of PTA. The Pilot Program does not change PTA provisions, which provide that time be added to the 20-year term of a patent for certain administrative delays by the USPTO. PTA is offset, however, by an applicant’s failure to reply within three months to a notice to file missing parts. Thus, any applicant that takes full advantage of the Pilot Program could lose up to nine months of patent term that might otherwise be available.
The Pilot Program, despite its shortcomings, ultimately provides applicants more choices and greater flexibility in deciding whether to seek patent protection, and we applaud the USPTO and its leadership for listening and taking action.
Additional information on the Pilot Program and details related PTA in the pharmaceutical industry can be found at Foley's PharmaPatents blog (http://tinyurl.com/2f8mer3).
Legal News Alert is part of our ongoing commitment to providing up-to-the-minute information about pressing concerns or industry issues affecting our clients and colleagues. If you have any questions about this alert or would like to discuss the topic further, please contact your Foley attorney or the following:
Jeanne M. Gills
Vice Chair, IP Department
Andrew E. Rawlins
Chair, Mechanical & Electromechanical Technologies Practice
Barry L. Grossman