On Friday, April 2, 2010, the United States Patent and Trademark Office (USPTO) proposed a rule change (at http://www.uspto.gov/patents/law/notices/75fr16750.pdf) that would allow patent applicants to defer payment of most application filing fees by 12 months, thereby effectively creating a net 24-month period for pursuing a U.S. nonprovisional application claiming the benefit of the filing date of a U.S. provisional application.  The proposed rule is in response to requests from the inventor community to reduce the costs due one year after filing a provisional application. 

The proposed change would be implemented through the missing parts practice in nonprovisional applications.  Currently an applicant can pay the up-front filing fees and submit an executed oath or declaration with a surcharge payment later within a two-month time period set by the USPTO, which is extendable on payment of extension fees for an additional five months.  Under the proposal, applicants would be permitted to file a nonprovisional application with at least one claim within the 12-month statutory period after the provisional application was filed, pay the basic filing fee, and submit an executed oath or declaration.  In addition, the nonprovisional application would need to be in condition for publication and the applicant would not be able to file a nonpublication request.  Applicants would be given a 12-month period to decide whether the nonprovisional application should be completed by paying the required surcharge and the search, examination, and any excess claim fees due within that 12-month period. 

In the notice, the USPTO disclosed that roughly half of all provisional applications are permitted to go abandoned without the subsequent filing of nonprovisional applications claiming their benefit.  Accordingly, the proposal would seemingly benefit applicants by permitting additional time to determine if patent protection should be sought at a relatively low cost and by permitting applicants to focus efforts on commercialization during this period.  The proposal would appear to benefit the USPTO and the public by adding publications to the body of prior art, and by removing from the USPTO’s workload those nonprovisional applications for which the applicants have decided not to pursue examination, but have nonetheless filed a nonprovisional application with incomplete commercial information. 

It is important to note that the extended missing parts period would not affect the 12-month priority period provided by the Paris Convention.  Thus, any foreign filings would still need to be made within 12 months of the filing date of the provisional application if an applicant wishes to rely on the provisional application in the foreign-filed application.  Likewise, it appears that foreign applicants, who first filed outside of the U.S., would not be able to take advantage of the 12-month extension, since they would not be claiming benefit under 35 U.S.C. § 119(e).

The proposed changes seem a bit convoluted with the missing parts practice, but they appear to be needed to comply with 35 U.S.C. § 111(b)(5), which requires that a provisional application be regarded as abandoned 12 months after its filing date.  The effect of the proposed changes would require an applicant to file a nonprovisional application within the 12 months, but would defer substantial costs for an additional 12 months.

Taking advantage of the additional time with the missing parts practice would have a negative impact on patent term adjustment.  In the proposal, if an applicant replies to a notice to file missing parts more than three months after mailing of the notice, the additional time would be treated as an offset to any positive patent term adjustment that will be accrued by applicant.

The USPTO is also considering offering applicants an optional service of having an international style search report prepared during the 12-month extended missing parts period. The optional service would provide the applicant with information concerning the state of the prior art and may be useful in determining whether to complete the application and the claims to pursue if the application is completed.

The USPTO notice requests comments on the proposed rules by June 1, 2010.