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TAKEAWAY: The USPTO has decided to continue the Extended Missing Parts Pilot program that provides applicants with additional time (12 months) to determine whether patent protection is desirable. However, this program is limited to nonprovisional applications that directly claim benefit to a provisional application.

The USPTO first initiated the Extended Missing Parts Pilot Program in December 2010 to reduce costs and conserve agency resources. Under the USPTO’s Extended Missing Parts Pilot Program, applicants can request a non-extendable 12-month time period to pay the search, examination, and excess claims fees. (See Extension of the Extended Missing Parts Pilot Program, 80 Fed. Reg. No. 8, 1624-1627; January 13, 2015).

An applicant must satisfy the following conditions to qualify for the Extended Missing Parts Pilot Program: (1) The applicant must submit a certification and request to participate in the Extended Missing Parts Pilot Program with a nonprovisional application filing; (2) the application must be an original (i.e., not a reissue) nonprovisional utility or plant application filed under 35 U.S.C. 111(a) within the duration of the pilot program; (3) the nonprovisional application must directly claim the benefit under 35 U.S.C. 119(e) and 37 C.F.R. 1.78 of a prior provisional application filed within the previous 12 months, and the specific reference to the provisional application must be in an application data sheet under 37 C.F.R. 1.76 (see 37 C.F.R. 1.78(a)(3)); and (4) the applicant must not have filed a nonpublication request. Thus, the Extended Missing Parts Pilot Program is only available as an extension of a provisional patent application and is generally not available to divisional or continuation applications since these applications do not claim priority directly from a provisional application. However, a continuation application may take advantage of the Extended Missing Parts Pilot Program if it also directly claims priority from pending provisional application. Furthermore, the application must be in condition for publication as provided in 37 C.F.R. 1.211(c).

The Extended Missing Parts Pilot Program benefits applicants by permitting additional time to determine whether patent protection should be pursued. The public benefits due to the increased volume of prior art, and the USPTO’s workload is lessened by removing nonprovisional applications where the applicant has decided not to pursue patent protection.