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The United States Patent and Trademark Office (USPTO) is rolling out a new Automated Search Pilot Program, offering applicants a first-of-its-kind opportunity to receive a pre-examination, AI-generated prior art search report. The program's stated goals are to improve prosecution efficiency and the quality of patent examination by providing an Automated Search Results Notice (ASRN) before an examiner reviews the case. The ASRN is intended to provide an earlier communication regarding potential prior art issues and could bring about significant changes in how utility filings are prosecuted and strategized.
How it Works
The USPTO's internal AI tool will generate the ASRN by searching the application text against multiple U.S. and foreign databases, ranking up to ten documents for relevancy. Shortly after pre-examination processing, the ASRN is issued to the applicant, providing insight into the potentially relevant prior art uncovered—but requiring no response.
This will give the applicant an opportunity to assess prior art issues before substantive examination. Applicants are not required to respond to the ASRN, but may opt to file a preliminary amendment to place the application in better condition for examination. Applicants may also request deferral of examination or file a petition for express abandonment and seek a refund of certain fees if prosecution is no longer desired.
How to Participate
Applicants filing original, noncontinuing, utility patent applications between October 20, 2025, and April 20, 2026, can participate in the program by submitting a petition (Form PTO/SB/470) and the then-current petition fee set forth in 37 CFR 1.17(f) with the application filing. The application must be filed electronically using the USPTO's Patent Center, and the application must conform to the USPTO requirements for DOCX submission upon filing. Finally, the applicant must be enrolled in the Patent Center Electronic Office (e-Office) Action Program to participate.
International applications entering the national stage in the US, plant applications, design applications, reissue applications and continuation applications are not eligible.
Potential Benefits
The clearest benefit of this program is the opportunity for applicants to see potentially relevant prior art before substantive examination proceeds. For patent owners operating in crowded technology spaces, this may mean fewer surprises and an earlier ability to refine claim strategy. Receiving an automated prior art report enables applicants to refocus the claims before substantive examination, potentially heading off costly additional cycles of prosecution. It also creates a pathway for quick decision-making: if the ASRN reveals insurmountable prior art, applicants may opt for express abandonment and seek a refund of the search and any excess claims fees.
What Applicants Need to Know
The ASRN is limited to a maximum of 10 references, which will be listed in order of relevance as ranked by the AI tool. Typically, if the AI tool actually uncovers the best art, the top handful should be sufficient. But whether the AI tool finds the best references—or at least those as good as the examiner will find—remains to be seen.
At this stage, AI technology is still nascent and not without error. As of this writing I have tested several AI search tools and have been somewhat disappointed with the results. While these AI tools may uncover some nuggets, they are often hit-or-miss, returning irrelevant references and making poorly reasoned combinations of prior art that fail to meet legal standards for combinability. These tools can be useful, but still require a fair amount of human oversight to achieve good results. Thus, the references returned with the ASRN may be mixed or questionable value. I plan to test this pilot program myself to see whether there is value in the preliminary results.
Examiners often possess deep expertise in their assigned art units and have accumulated personal collections of highly potent art over their lengthy tenures. These "go-to" references are often uncovered based on human intuition and years of hard work, rather than searchable metadata or textual similarity. Thus, the AI system generating the ASRN may overlook these highly relevant references. Consequently, applicants may still encounter more significant or challenging prior art in the first Office Action than what appears in the automated report.
Tactical and Strategic Considerations
Any preliminary amendment to address results of the automated search should be submitted as soon as possible to reduce the likelihood that the amendment interferes with preparation of the first Office Action. Teams should establish protocols for prompt ASRN review and clear criteria for preliminary amendments, abandonment, or examination deferral.
As with any new process, in-house counsel and portfolio managers should weigh the strategic fit before participation and monitor outcomes as real-world experience with the program accumulates. Teams contemplating the pilot program should weigh whether the value of obtaining an early prior art report aligns with their portfolio management goals. For example, in fast-moving sectors where fast, strategic pivots matter, the program may offer a real advantage by streamlining prosecution. While there may be additional cost associated with reviewing the references and filing a preliminary amendment, that cost may be offset by fewer rounds of Office Actions before allowance.
Early search results from the ASRN may also assist with foreign filing decisions, which often need to be made before receiving a substantive Action in the U.S. If the ASRN reveals prior art that poses a major hurdle, applicants may decide to forgo foreign filings and avoid the accompanying expenses. Absent such insight, applicants are often forced to make these costly decisions without knowing the prior-art landscape, just to preserve their priority date. Conversely, when proceeding with foreign filings, the ASRN may enable you to refine your claims from the outset, increasing your chances of a more efficient prosecution abroad.
Final Thoughts
The USPTO's Automated Search Pilot Program provides the potential for up-front insight into relevant prior art, allowing applicants to make more informed early decisions and streamline prosecution. While it may bring the opportunity for greater efficiency and cost savings, its true value will depend on the relevance of the AI-located references. If the Program lives up to its promise, it will allow applicants to make informed decisions up front to avoid unnecessary rounds of examination. But with a limited reference count and uncertainties associated with an AI-generated prior-art search, whether the Program translates into real benefits will not be known until we have had a chance to road-test the Program.
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