[Patentpractice] 18 month publication + missing parts --> USPTO policy change?
William Ahmed
ahmed.william at ymail.com
Thu Mar 20 11:27:40 UTC 2025
Dear All,It has been our experience that after a non-provisional application is filed [e.g. even a CON with benefit claims going back many years] , if there is a 'missing parts' (e.g. filing fees were not paid) mailed concurrent with the FIRST filing receipt, the USPTO does not give a projected publication date in the first filing receipt.It is our experience, they always HOLD off on publication (or even giving a projected publication date), even though the '18 month' date has long passed, until ALL 'missing parts' matters have been resolved (i.e. until the USPTO mails a filing receipt with NO accompanying formalities action)
Recently, we filed such an application - we paid all filing fees but did NOT pay extra-claims fees. The first filing receipt enumerated a 'scheduled publication date.'Together with that 1st filing receipt, the USPTO mailed a 'missing parts' notice asking for ONLY claims fees.The USPTO diligently published that US non-provisional on the 'scheduled date for publication' set forth in the first filing receipt (mailed together with the 'missing parts' notice). In fact, this application was published one week after a response to the 'missing parts' was submitted, and the USPTO considered the application to be 'complete.'
I do not recall this EVER happening -- if memory serves me, the USPTO does not even schedule any publication date until ALL 'missing parts' or 'corrected application papers' matters have been resolved (i.e. until the application is 'complete') - and typically publication is around 12 weeks thereafter.
Working from memory, I think that this has been the pattern for at least a decade.
QUESTION 1 --> Has there been a policy change?? QUESTION 2 --> If we had filed this US non-provisional without ANY fees, would the USPTO still have diligently published, or would they have waited (possibly up until 7 months after filing) for payment of the filing fees, before publishing the application?
FINAL NOTE --I am not complaining - by law, such post-18 month publication is certainly the USPTO's prerogative (one might even say OBLIGATION) --- I am just trying to ascertain empirically how things are being handled at this time.
I would be very appreciative if someone were to share her/his experience.
Many thanks,Bill
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