A Notice to File Missing Parts is an office action identifying part(s) of the patent application that was not initially filed but should have been filed. A complete patent application was not filed. Those parts must now be filed to complete the patent application. Otherwise, examination on the merits of the invention will be delayed. A response including the identified parts must be filed within 2 months of the mail date of the Notice to File Missing Parts without the payment of an extension fee. However, the response may be filed up to 7 months later with the payment of progressively higher monthly extension fees.
A complete application include:
- A specification;
- A drawing set;
- The Filing fee, Search fee, and Examination fee;
- Application Data Sheet or ADS; and
- An oath or declaration of the inventor.
If any of these documents or the fee were not filed with the patent application, the Patent Office will send the Notice to File Missing Parts. See the example below.
Do you need to submit all of these things to get a filing date?
You do not need to submit all of these documents and the fees to establish a filing date (i.e., priority date) for your invention. The filing date can be established by filing:
- the specification,
- the drawing set, and
- one claim.
Everything else can be filed at a later date after you receive the Notice to File Missing Parts.
When do you need to file these documents and fees?
The documents and fees must be filed within two (2) months of the mail date of the Notice to File Missing Parts. You have five (5) additional months with the payment of progressively higher monthly extension fees.
The declaration of the inventor can be filed even later. It must be filed no later than the payment of the issue fee. If the application is never allowed, you do not need to file the oath or declaration of the inventor.
Nevertheless, the best practice is to file the oath or declaration of the inventor with the filing of the patent application. Otherwise, any failure to file the oath or declaration of the inventor would force you to withdraw your application from issuance or invalidate your patent.
How do you respond to a Notice to File Missing Parts?
To respond to the Notice to File Missing Parts, you need to provide a written explanation confirming that you are including the missing parts as an attachment to the written explanation. Plus, you need to submit a copy of the Notice to File Missing Parts.
Also, you need to pay any extension fees if you file the response more than two months after the mail date of the Notice to File Missing Parts.
Why would you file less than all of the parts of a complete patent application?
In general, there are three reasons that one would file less than all of the parts of a complete patent application. First, you forgot to submit one of the parts. Second, you paid for a small entity fee but forgot to submit the claim for small entity status. The patent office will send you a notice to file missing parts to pay the large entity fee. Third, you want to delay the examination of the patent application. Filing an incomplete patent application prevents your patent application from entering the queue for examination until you file all of the parts.