It is unclear what is meant by this. The reply period for a notice to file missing parts is a non-statutory time period that is not governed by § 133. The USPTO lets applicants purchase up to five months to reply to the notice.

(a) attorney fees for getting a disclosure up to the standards required by § 112 ¶ 1 (including getting publication-quality draiwngs, which are still required by this proposal); and

(b) the inventor’s time sucked into patent stuff and taken away from running the business. (Perhaps some people at PTO are under the misimpression that everyone else documents their work the way IBM does? No way — not even close. I’ve seen the internal documentation culture at IBM, HP, and DEC — IBM stands alone in its mastery of producing paper! For everyone else, seldom does such a document exist for pure business reasons, and producing it for patent purposes alone is a costly exercise.)

I have no objection to to this new program, as long as the law isn’t changed. God bless anything that gives inventors more options, without depriving the public of notice of what’s pending (though I question whether § 133 gives the PTO has legal authority to grant any more than six months to reply to a Notice to File Missing Parts – the PTO can only make this proposal work if they delay issuing the NTFMP until six months after filing the non-provisional).

But just as surely, this is no substitute for the grace period.

What at first blush appears to be a genuine attempt at helping the patent bar (and the greater patent community) needs a bit of a closer look.

What actually is being offered?

Will such offering stand (in light of the agency’s lack of substantive rule making, and existing foreign treaty requirements)?

What is being asked for in return?

Is it worth it?

It appears that what is being offered is a non-substantive rule change that extends the response time for certain “missing” elements of a normal non-provisional patent application, (namely a developed claim set) in exchange for the presence of certain other elements. If nothing else, the sense of “wink-wink” draws red flags. Why not simply do as Gene states? Could it be because such an action is a substantive rule making, whereas mere extending time of an existing rule (and oh, by the way, you must also do this…) feels less like a substantive rule?

In the fifth element of what an applicant would be required to satisfy there is a subtle clue: The indication is that there would be no change made in the order in which applications are examined as a result of the current proposal. EXCEPT, this would only apply if the agency never goes under a year in its examination queue for ANY application in ANY art group. If I am not mistaken, Gene, you had your knickers in a twist awhile back with examples of applications having just such a less than a year examination queue. Smell that?

But let’s continue, shall we?

It is stressed that no statutory requirements are being changed, only that applicants would be able to “more easily” avail themselves of the benefits of missing parts practice. This is only true in the very slippery comparison to the round-about practice of purposely filing with missing parts, and talking up to the seven month window to file a continuation non-provisional claiming priority to the ill-filed first non-provisional (a word of warning – it was not mentioned that that first non-provisional MUST be perfected in order to achieve a filing date which in turn is needed in order to then turn around and piggyback off of that filed application – forget to perfect, and you have broken the chain). In essence, there is NOTHING stopping anyone from extending this tidy little trick to a filing off of the first continuation for an additional seven months, is there (there might be – I haven’t fully checked it out)? If this bears out, then right now the game can be played without giving anything new to the Office.

Of course, the Office begrudgingly and almost silently acknowledges this, how else can they say that there is no statutory change here? Consider as well, the pre and post items falling under the “missing elements” provision. Pre:executed oath or declaration, fee. Post: developed claim set. Now I would put to you that a developed claim set is a bit more of the heart of the application and not some mere oath or payment (more on the claim set soon), doesn’t it seem too good to be true that you can have additional time for the meat of the application?

What is the Office asking for?

I always find it telling to figure out the angle that the other side is aiming at. What does the Office ask for? Well, primarily they make the stipulation that you cannot have a non-publication request. How interesting. On various other threads the discussion of Quid Pro Quo has been heard. The ONLY way now the traditional Quo is reserved to the applicant is through a non-publication request. Is it any real surprise that publication is so earnestly being sought? Once publication happens, what is the applicant truly left with? They can give up the fight for a patent, but they have sacrificed all leverage of keeping their quo to themselves. Regardless of when or if a patent issues, the Office has already collected.

In the present Congressioanl amendment debate, Ron K amongst others has made a very daunting argument against the First Inventor to File scenario. This offer by the Office seems to be a direct counter attack to that argument, but it fails in one primary avenue. By forcing capitulation of publication, the small entity has to submit to publication NO MATTER WHAT develops in the pursuit of the patent. The Office gets its quo for the “additional” year of development. But that additional year is only a non-illusion if the applicant has no plans to file abroad,and no new matter develops over that time (since the specification is still locked in – only the claims are being offered to be delayed) because the foreign treaties see right through this smoke and mirrors and the extra twelve months KILLS any application that uses the new “delay”. The loss is irretrievable. The gift horse of an optional international style search report is also an illusion. The gift (that you have to still pay for) means nothing since it applies as its basis law of the international arena (If you are only concerned with the US, such a search based on international law is meaningless since it is not done to US law and the examiner will still perform a search under US law), so the international style buys you nothing. If you plan on international, this avenue is not available and you will be paying for the international search anyway. Illusorily gifts smell like snake oil.

Also, with the Ariad decision, even original claim sets are now fair game to the description requirement of the originally filed specification. Original claims being self descripting will be the next battleground. In truth, what is being offered is a year to write claims on what you already have submitted without the benefit of any additional real development (only external business environment development). A crtical problem is, high quality applications are typically centered on the claims and it makes little sense to wait a year to write them. The promise of legal savings is an illusion.

I also find it telling how many times the Office (and even Gene) stress how important it is to have a provisional with a complete disclosure and a high quality application papers. What is not being stated here, at least not as directly as needed, is that such provisionals are orders of magnitude more expensive than the currently available “cheap and dirty” provisional. Sure, Gene states “…would, in most cases, be able to file a non-provisional application with little additional effort and expense”, but truth be told – this would only apply in rare cases, not in most cases. Why? you may ask. The why has to do with the meat of any application – the claims. While I recognize that application writing is an art and there is no one way to write an application, I would still posit that quality applications by and large have more than half the effort directed to the claims. The only way a provisional approaches the “little additional effort and cost” scenario is if the claims are worked on in the non-provisional. The problem here is that the enticement of the years time of development mean that the efforts related to the claims are to a certain degree dependent on that year of development, and thus the provisional with complete disclosure and high quality application papers is not possible until after the development coalesces.

Now mind you, I preach against the “cheap and dirty” mindset every chance I can, but the truth of the matter is that throwing every thing you can in an application that will not be examined and will not be published unless you later tie into a well developed non-provisional is a very very cheap way of providing come protection and date management of your development process. This option will be ever so subtly extinguished.

You know what they say, if it looks too good to be true…

As Gene said, the best solution would be amendment of the Federal statute itself to 24 months.