May 2011 Issue

USPTO Program Gives Applicants More Time to Decide on Pursuing a Patent


The Program, which extends through December 8, 2011, establishes procedures for requesting a nonextendable twelve-month time period in which to perfect the filing of a nonprovisional application that claims the benefit of an earlier-filed provisional application.  Participation in the Program effectively extends the twelve-month provisional period by providing an applicant with an additional twelve months after the filing of a nonprovisional application in which to decide whether to pay the necessary search, examination, and any excess claims fees, and pursue the nonprovisional application.

To take advantage of the additional twelve-month period, an applicant must file an original nonprovisional application within twelve months of the filing of a provisional application and directly claim the benefit of the provisional application.  The nonprovisional application should satisfy all of the requirements for claiming the benefits of priority to the nonprovisional application.  Simultaneously with the nonprovisional filing, the applicant also must submit a certification and request to participate in the Program, preferably by using Form PTO/SB/421, entitled “Certification and Request for Extended Missing Parts Pilot Program.”  In addition, the applicant must not have filed a nonpublication request, and the application should include all of the parts necessary to receive a filing date and be in condition for publication.  Among other things, submission of the basic filing fee, an executed oath or declaration, and any required application size fee are required to place an application in condition for publication.

If an application is deemed not to be in condition for publication because, e.g., it was not filed with the basic filing fee or a declaration, and the applicant has submitted a certification and request to participate in the Program, the USPTO will accept the applicant’s request.  However, the USPTO will issue a Notice to File Missing Parts of Nonprovisional Application that sets an extendable two-month period for correcting the application filing to place it in condition for publication.  In addition, the Notice will set a nonextendable twelve-month period for submitting the search, examination, and any excess claims fees.  If the applicant did not pay the search and examination fees at the time of filing, a surcharge of $130.00 ($65.00 for small entity) will be required when paying those fees.  Otherwise, no additional fees are necessary to participate in the Program.

It is worth noting that the change in missing parts practice has no effect on the twelve-month priority period provided under the Paris Convention for the Protection of Industrial Property.  Thus, all foreign applications intended to rely on the provisional application must still be filed within twelve months of the provisional application filing date.  The same would also apply to applications that are to be filed in countries requiring filing within twelve months of the earliest application filing.

Additional information about the USPTO Extended Missing Parts Pilot Program may be found at