Missing Parts Strategy

Unlike some jurisdictions, the United States does not require patent applicants to formally request examination.  Instead, the USTPO simply considers the application in due course.

Still, Applicants might want to delay consideration of applications.  For example, maybe the Applicant is waiting for a product market to mature.  Maybe the Applicant is awaiting the results of an infringement analysis.  Maybe the Applicant simply requires more time to receive experimental test results.

So, one strategy simply is to not pay the filing fees (i.e., the basic, search, and examination fees).  This strategy will trigger a Notice to File Missing Parts (NFMP).  The NFMP will incur an additional fee of $160 currently.  However, the Applicant will be granted two months to satisfy the NFMP by paying the filing fees and the additional fee. 

In addition, the response to the NFMP is extendable 5 times with the payment of additional fees.  (These fees can be expensive, though.)

The USPTO will not consider the application until the filing fees are paid.  So, satisfying the NFMP effectively acts as a request for examination.  Accordingly, the Applicant safely can file a Preliminary Amendment until the NFMP is satisfied. 

Of course, if the Applicant ultimately decides not to pursue the application, the Applicant can abandon the application without having paid governmental fees.  So, this strategy sometimes can minimize Applicant’s cost (at an additional expense at other times).

Although this strategy applies to original filings, this strategy is particularly well-suited to continuation applications.

Thus, if Modal PLLC can assist you in developing a continuation strategy, please contact us.

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