By Donald Zuhn —

In a Federal Register
notice published earlier today (78 Fed. Reg. 2256), the U.S.
Patent and Trademark Office announced that the Extended Missing Parts Pilot
Program that was implemented two years ago would be extended for another
year.  The pilot program allows
applicants to request a twelve-month extension to pay the search fee, examination
fee, any excess claim fees, and surcharge for late submission of the search and
examination fees in a nonprovisional application.  The notice indicates that the pilot program
benefits applicants by providing additional time to determine if patent protection
should be sought and focus on commercialization efforts, benefits the public by
adding publications to the prior art, and benefits the Office by removing nonprovisional
applications that applicants decline to pursue from its workload.  The pilot program has been extended through
December 31, 2013.

In December 2010, the
Office implemented the Extended Missing Parts Pilot Program, noting that it
would "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" (see "USPTO Implements
Pilot Program Extending Provisional Application Period").  The Office initially sought comments
regarding the program in April 2010 (see
"USPTO Seeks to Effectively Double Provisional Application Period").  Under the pilot program, the Office modified
its missing parts practice — which permits an applicant to pay the filing fees
and submit an executed oath or declaration after the filing of a nonprovisional
application within a two-month time period that is extendable for an additional
five months on payment of extension of time fees — such that applicants would
file a nonprovisional application with at least one claim within the 12-month
statutory period after the provisional application was filed (as well as pay
the basic filing fee, submit an executed oath or declaration, and not file a
nonpublication request) and then be given a 12-month period within which to
decide whether the nonprovisional application should be completed by paying the
required surcharge and the search, examination, and any excess claim fees.

Applicants wishing to
participate in the pilot program must satisfy the following requirements:

(1) submit a certification and request to
participate in the program at the time of filing of a nonprovisional
application (preferably using Form PTO/AIA/421);
(2) the application must be
an original (not reissue) nonprovisional utility or plant application filed
under 35 U.S.C. 111(a);
(3) the nonprovisional
application must directly claim the benefit under 35 U.S.C. § 119(e) and 37 C.F.R.
§ 1.78 of a prior provisional application filed within the previous twelve
months, with the specific reference to the provisional application being made
in an application data sheet; and
(4) the applicant must not have
filed a nonpublication request.

The
pilot program was first extended in December 2011 (see "USPTO's Extended
Missing Parts Pilot Program Is Extended").  In today's notice regarding the extension
of the pilot program, the Office:

[C]autions all applicants that, in order to
claim the benefit of a prior provisional application, the statute requires a
nonprovisional application filed under 35 U.S.C. 111(a) to be filed within
twelve months after the date on which the corresponding provisional application
was filed.  See 35 U.S.C. 119(e).  It is
essential that applicants understand that the Extended Missing Parts Pilot
Program cannot and does not change this statutory requirement.

The form for requesting
participation in the program (PTO/AIA/421) also outlines the PTA effects of
participation in the program, stating that:

Any patent term adjustment (PTA) accrued by
applicant based on certain administrative delays by the USPTO is offset by a
reduction for failing to reply to a notice by the USPTO within three
months.  See 37 CFR 1.704(b).  Thus, if applicant replies to a notice to
file missing parts more than three months after the mailing date of the notice,
the additional time that applicant takes to reply to the notice will be treated
as an offset to any positive PTA accrued by the applicant.

In addition, under the
pilot program, nonprovisional applications are still published according to the
existing eighteen-month publication provisions. 
More importantly, the Office "advises" that:

[T]he extended missing parts period does not
affect the twelve-month priority period provided by the Paris Convention for
the Protection of Industrial Property (Paris Convention).  Thus, any foreign filings must still be made
within twelve months of the filing date of the provisional application if
applicant wishes to rely on the provisional application in the foreign-filed
application or if protection is desired in a country requiring filing within
twelve months of the earliest application for which rights are left outstanding
in order to be entitled to priority.

Perhaps in a nod to the
first-inventor-to-file (FITF) provisions of the Leahy-Smith America Invents Act
— and in particular to AIA § 3(n), which applies the FITF provisions to any
application filed on or after March 16, 2013 that contains or contained at any
time a claim having an effective filing date that is on or after March 16, 2013
— the Office's most recent notice states that:

While only one claim is required in a
nonprovisional application for filing date purposes and applicant may file an
amendment adding additional claims later during prosecution, applicant should
consider the benefits of submitting a complete set of claims on filing of the
nonprovisional application.  This would
reduce the likelihood that any claims added later during prosecution might be
found to contain new matter.

Where an applicant
participating in the program fails to pay the basic filing fee, provide an
executed oath or declaration, or submit application papers that are in
condition for publication — i.e.,
comply with the requirements for participation in the program (which are
essentially the requirements for publication of the application) — the
applicant is given a two-month (extendable) time period within which to supply
those items.  In the notice regarding the
second extension of the pilot program, the Office notes that applications that
are not filed electronically will still be assessed a $400 additional fee (or
$200 for small entities) pursuant to the AIA, that this fee will be due within
the two-month (extendable) time period to reply to the Notice to File Missing
Parts of Nonprovisional Application, and that applicants will not be given the
12-month time period under the pilot program to pay this fee.