IP Law Bulletin

In mid-January, the USPTO published a notice that its Extended Missing Parts Pilot Program would continue through the end of 2015. Originally introduced in 2010, the Extended Missing Parts Pilot Program allows applicants to delay the payment of fees required for examination (i.e., the search fee, examination fee, any excess claims fees, and surcharges for late fee payment) by up to 12 months, allowing a sort of “extension” to the term of a provisional patent application. To take advantage of the program, applicants must submit a certification and request to participate when filing a nonprovisional or plant application that validly claims the benefit of a provisional application (applicants also must not have filed a nonpublication request). The Extended Missing Parts Pilot Program can be an effective tool to further delay costs associated with filing and prosecuting a patent application, thereby allowing funds to be put toward commercial development. However, the program does not affect the 12-month priority period for foreign filing under the Paris Convention, so applicants should be careful to complete any desired foreign filings within 12 months of their provisional application filing date.

Click here to read the Federal Register notice regarding the Extended Missing Parts Pilot Program.