Missing Parts Pilot Program Extended to December 31, 2013
The value of this program for the small inventor with an eye on the budget is tremendous. The program is best explained by an example.
First, I will explain the patent application filing costs at the United States Patent and Trademark Office (USPTO) without this program.* Take small inventor Mark, who qualifies as a “micro-entity.” Mark has his patent attorney prepare and file a provisional patent application on Mark’s new invention. The provisional filing fee owed to the USPTO for a micro-entity is $ 65. Mark receives a filing date of 12/31/2012 for this application. Now in order for Mark to continue with seeking a patent for his invention, Mark must file a non-provisional patent application on or before 12/31/2013, i.e. on or within one-year. Thus, traditionally Mark has a year to fine tune his invention, obtain investors, and to determine if he really wants to pursue obtaining a patent. Mark decides he wants to pursue obtaining a patent and has his patent attorney timely prepare and file a non-provisional patent application. The minimum fee owed to the USPTO for a micro-entity will be at least $400 for filing a non-provisional patent application (i.e. $70 for the filing fee, plus $150 for the search fee, and $180 for the examination fee). (Note, the minimum non-provisional patent application fees are $1,600 for a large entity and $730 for a small entity.)**
Now, consider how the Missing Parts Pilot Program changes the above scenario. Under this program, Mark must still file his non-provisional patent application on or before 12/31/2013, but now Mark has until 12/31/2014 to pay the associated fees with that application filing, i.e. Mark gets an additional year to have to pay the non-provisional application fees to the USPTO. This essentially gives Mark two years from the time he files his provisional patent application to pay the non-provisional patent application fees to the USPTO. For example, if after 18 months from the time Mark filed his provisional patent application (and after 6 months from the time Mark filed the non-provisional patent application) Mark decides that seeking a patent on his invention no longer makes economic sense, Mark can simply not pay any more fees to the USPTO and just permit his application to become abandoned. That is, under this program Mark has saved himself $400. Or alternatively, Mark can decide at this 18-month juncture that he does want to pursue obtaining a patent and so decides to pay the missing non-provisional patent application fees to the USPTO.
Summary of Benefit
The benefit of the Missing Parts Pilot Program is both in extra time and the possibility of saving fees. The applicant gains an extra 12 months of time from the time of filing the non-provisional patent application to have to pay the fees associated with that filing. During this additional window of time, the applicant can further evaluate the economics of moving forward with seeking a patent.
Next Steps
If you have filed a provisional patent application in the latter part of 2012, then you must file a non-provisional patent application within one year (i.e. in the ladder part of 2013) and if you want to benefit from the Missing Parts Pilot Program, a special USPTO form must accompany your non-provisional patent application. This form is known as “Certification and Request for Extended Missing Parts Pilot Program.” See USPTO form PTO/SB/421 (12-10).
* The above example only addresses the fees an inventor/applicant would owe the USPTO for certain patent application filings. These fees owed to the USPTO are accurate as of October 22, 2013 and are subject to change. Note, however, the inventor would also owe fees to his patent attorney for the work in drafting, preparing, and filing the patent applications, i.e. the USPTO’s Missing Parts Pilot Program has no bearing on the costs an inventor pays his patent attorney.
** Depending upon the complexity of the patent application other fees could be due to the USPTO as well, e.g. late filing fee (called a surcharge by the USPTO), excess claim fee, excessive length of application fee, etc.
References:
http://www.uspto.gov/forms/sb0421.pdf (the applicable USPTO form)
http://www.uspto.gov/inventors/independent/eye/201103/missingparts.jsp (USPTO explanation of the program)
http://www.gpo.gov/fdsys/pkg/FR-2013-01-10/pdf/2013-00346.pdf (see page 2, the Federal Registrar noticing the program’s extension)
Eric Kelly
USPTO Registration No. 70,302
Patent Agent at
JAFARI LAW GROUP®, INC.