The USPTO has proposed changes to Missing Parts practice, ostensibly in response to requests to reduce costs that are incurred one year after a provisional application is filed. It is hard to believe that the ability to delay the payment of certain fees would offer any significant relief to applicants. On the other hand, the proposed changes create several traps for the unwary that could impose significant new costs.
The Benefits of the Proposal
Under the proposal, applicants would have to pay the basic filing fee ($330/$165) within the normal time frame, but could delay payment of the search and examination fees (and any excess claim/page fees) until 12 months from the non-provisional filing date. That is, applicants could postpone payment of $890/$445 for up to 12 months without having to pay for extensions of time.
The Costs of the Proposal
Applicants could incur significant costs for being able to keep a few hundred dollars in the bank for a few more months:
- Administrative costs of monitoring a new deadline
Assuming the USPTO does not do away with current Missing Parts practice (which would be an entirely independent reason for opposing the proposal!), applicants would have to keep track of two separate deadlines for completing filing formalities: one for the basic filing fee and executed inventors’ declaration and one for the delayed fees. For applicants with a large number of application filings, this new administrative burden would not be trivial.
- Patent Term Adjustment Consequences
The USPTO intends to charge applicants with “delay” under the Patent Term Adjustment (PTA) provisions for paying the search and examination fees more than three months after a Notice to File Missing Parts is issued. If a Notice is issued within one month of filing, an applicant who takes full advantage of the new proposal would incur a PTA deduction of 8 months. For patents directed to biotechnology or pharmaceutical inventions (whose value often peaks at the end of the patent’s term) the costs of this potential loss of additional patent term could far out-weigh any benefits of the proposal.
- Confusion About the Effects of the Proposed Changes
The Federal Register notice creates a trap for the unwary in its mischaracterization of the proposed changes. The notice describes the proposed change as “provid[ing] a 12-month extension to the 12-month provisional application period (creating a new 24-month period).” This characterization is misleading at the very least. While the proposal extends the period for submitting certain fees, it does not prolong the pendency of a provisional application, or delay the date by which a non-provisional application must be filed. Thus, even applicants who take advantage of the new proposal still will incur the significant costs of preparing and filing a complete specification within 12 months of the provisional application filing date, and also must satisfy all foreign (including PCT) filing requirements by the same deadline.
Weighing the potential costs against the benefit of delaying payment of $890/$445 for up to 12 months, the proposal just doesn’t add up. It will be interesting to see the public comments on this proposal, and how the USPTO responds. Unless I am missing the point, I think this proposal misses the mark.