January 2, 2012
As we reported in December of 2010, the U.S. Patent and Trademark Office (USPTO) instituted the Extended Missing Parts Pilot Program, designed to allow patent applicants to defer payment of some of the application filing fees. On December 16, 2011, the USPTO announced that this pilot program will run at least until December 31, 2012.
Patent applications may receive a filing date from the USPTO before the applicant pays the filing fee. When the USPTO receives an application filed without a fee, it will send the applicant a Notice to File Missing Parts, which ordinarily provides a two-month period within which the fee must be paid. Ordinarily, this period may be extended by up to five additional months upon payment of time extension fees. Under the pilot program, an applicant may request a single, nonextendable twelve-month period within which to pay the search and examination fees and any excess claim fees.
The pilot program is of somewhat limited benefit and applicability, for a number of reasons:
• The program is limited to applications that are filed within the program period and that claim priority to an earlier-filed provisional application, and in which no request for nonpublication is filed. The program does not apply to provisional applications and does not apply to applications that enter the national stage via the Patent Cooperation Treaty.
• The fees that may be deferred represent only a portion of the overall application cost. The applicant still must pay the basic filing fee, and the application must otherwise be brought into condition for publication, at or shortly after the filing date. This includes the preparation of drawings sufficient for publication and the filing of an oath and any needed English translation, among other requirements.
• More significantly, the application must be sufficiently complete so as to be entitled to a filing date, and thus the applicant must incur the expense of preparing such application. Typically, the cost of preparing the application is much greater than the fees that may be deferred.
• The pilot program does not affect the Paris Convention deadline for filing foreign counterpart applications. The applicant must file any foreign or international application within the normal twelve-month period.
• The applicant will pay a surcharge when paying the filing fees, and if the USPTO’s rate schedule has increased, the deferred fees will be assessed at the higher rates.
• The filing of a request to participate in the program will almost certainly cause a loss of some patent term.
Nonetheless, some applicants may find the deferral of fees associated with the USPTO’s pilot program to be attractive.
For more information on this pilot program, please contact Fitch Even partner Allen E. Hoover.