Stayin’ Alive – Patent Office Extends “Provisional Application Period.”

On December 8th, the Patent Office announced plans to implement a “Missing Parts Pilot Program” that would permit applicants at the end of the one-year U.S. provisional application term to defer substantive examination for up to 12 months by filing a regular U.S. application, and paying various fees to defer replying to the notice to file missing parts.  See USPTO Press Release 10-62, December 8, 2010.  The regular U.S. application would be published, but the ability to delay payment of the search and examination fees will effectively extend the pendency of the provisional application an additional year. Just fill out Form PTO/SB/421 and you are on the prosecution detour.

While the PTO is touting the potential savings to applicants, who will have more time to decide whether or not to incur U.S. prosecution costs, this slow track to the Examiners is fraught with third rails that could zap applicants. To begin with, foreign filings must still be completed at 12 months from the provisional’s filing date or those rights will be lost. Also, any new matter, e.g., supplemental supporting data, broader generic claims, etc., must still be added to the regular U.S. application at that time as well. Adding any new matter at the “24 month date” would be considered a CIP filing, and subject the augmented filing to all the hazards of intervening art, including that due to the publication of the applicants foreign filings, or even of their (incomplete) U.S. application. Of course, such publications would also create absolute novelty bars to later-added, broader claims in most foreign jurisdictions. A PTO penalty will also be charged against the term of any application that is delayed via this program. For a more detailed discussion of the substantive aspects of this program, see 75 Fed. Reg. 16750 below. Caveat emptor!

75 FedReg at 69835

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