The United States Patent and Trademark Office (USPTO) has initiated a new PCT Informed Examination Request (PIER) Pilot Program. The PIER Pilot Program relates only to national stage applications filed under 35 U.S.C. § 371. Under the PIER Pilot Program, the USPTO may select certain unexamined national stage applications and require applicants to confirm whether they wish to proceed with examination. The USPTO has indicated that applications nationalized based on a PCT application with an International Search Report that includes at least one reference with an X or Y designation are more likely to be selected for participation. Applicants cannot request participation in, or opt out of participation in the PIER Pilot Program. There is no USPTO fee for participation.
Selected applications will receive a USPTO Notice (not considered a first action on the merits) requiring the applicant to elect one of the following three options:
(1) proceed with examination,
(2) delay examination for 12 months, or
(3) expressly abandon the application.
A response is due within two months, although extensions of up to four additional months are available. Failure to respond to the Notice will result in abandonment of the application.
If an applicant elects to proceed with examination, the application will then be placed on an examiner's docket. Though not required, the applicant may also file a Preliminary Amendment. This provides an opportunity to amend the claims in view of the International Search Report, Written Opinion, and/or International Preliminary Report on Patentability.
An election to delay examination by 12 months becomes effective upon the Applicant’s request, and cannot later be withdrawn. The Applicant should also consider that an election to delay examination will reduce any Patent Term Adjustment (PTA) by the full 12-month period, as the delay is attributable to the Applicant rather than to the USPTO. In circumstances where the Applicant decides to abandon the application upon receipt of the PIER Pilot Program Notice, it may be more cost effective to simply take no action and allow the application to go abandoned for failure to reply, rather than filing a formal response. No refunds application fees are available after a PIER Pilot Program Notice has been mailed.
The USPTO indicated that applications selected for the PIER Pilot Program will come from high pendency technology areas, and that it plans to select applications that are expected to be docketed to an examiner within 5-6 months. The PIER Pilot Program will therefore provide applicants with an opportunity at a time closer to docketing to confirm their intention to have the application examined, either more promptly or with a proactive delay of a year, and to update the application prior to the start of examination. The PIER Pilot Program is scheduled to run through April 9, 2027.
Pre-Docketing Notice Pilot Program
In addition to the PIER Pilot Program, the USPTO is instituting a separate Pre-Docketing Notice Pilot Program for pending utility nonprovisional patent applications. Applicants will receive a Pre-Docketing Notice approximately three months before the application is expected to be docketed to an examiner for examination. The Pre-Docketing Notice is only informational and does not require a response by the Applicant. This again offers applicants an opportunity to file a Preliminary Amendment or to update any other application related information such as inventorship and ownership. Express abandonment of the application may be pursued, and applicants may seek a refund of search fees, as well as any excess claim fees.
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While applicants retain the ability to amend their applications outside of these new programs before examination begins, the new Programs provide timely notice to applicants of the status of their applications, providing a final chance to reconsider and update the filing strategy. Reassessing the value of applications as they prepare to undergo examination can lead to patent protection more aligned with any evolving business conditions related to the pursued inventions.