- within International Law topic(s)
The USPTO has issued a notice regarding a new pilot program. The notice indicates that USPTO will select certain national stage patent applications for participation in the PCT Informed Examination Request (PIER) Pilot Program.
How will it work?
USPTO will select certain applications from the inventory of unexamined national stage applications.
How is a national stage application selected?
Only national stage applications that have completed pre-examination processing will be selected. Applications filed under 35 U.S.C. § 111(a), including by-pass continuations (§ 111(a) filings claiming benefit to a PCT application under 35 U.S.C. § 365(c)) and plant, design, and reissue applications, will not be selected.
Can I opt out?
No. Applications entered into the program are at the sole discretion of USPTO. USPTO will not grant any petition to participate, abstain, or be removed from the program.
What will USPTO issue in the selected application?
A requirement for information (RFI) under 37 C.F.R. § 1.105 will be issued in the application, providing 3 options for the applicant. An RFI is considered an action under 35 U.S.C. § 132 for purposes of 35 U.S.C. § 154(b)(1)(A)(i) and 37 C.F.R. § 1.702(a)(1). The RFI will set a 2-month period for reply from the date of the RFI, which is extendible for a period of 4 months, in accordance with 37 C.F.R. § 1.136(a).
What are the 3 options for responding to the RFI?
1. Proceed with the national phase of examination,
2. Delay the national phase of examination under the program (up to 12 months), or
3. Expressly abandon the national stage application.
What if I just don’t respond?
Failure to respond will result in abandonment of the national stage application. Where the applicant deliberately permits the national stage application to become abandoned, the abandonment of such application is considered to be a deliberately chosen course of action, and the resulting delay cannot be considered as “unintentional” within the meaning of 37 C.F.R. § 1.137.
What is the PTA impact if I delay national phase of examination up to 12 months?
The Office will treat the request for the 12-month delay of examination as a failure of an applicant to engage in reasonable efforts to conclude processing or examination of an application under 35 U.S.C. 154(b)(2)(C)(i) and (iii) and 37 CFR 1.704(c).
If I expressly abandon, can I get a refund?
Because a requirement for information is an action under 35 U.S.C. § 132, express abandonment under 37 C.F.R. § 1.138(d) to obtain a refund of search fees and any excess claims fees is unavailable.
What is the mechanism for responding?
The applicant must use the PTO/SB/478. If filed electronically, the applicant must use the document description provided on the form.
How long will the pilot program run?
The pilot program will run from April 9, 2026 through April 9, 2027. The USPTO plans to evaluate how requiring an applicant who desires to prosecute an application to request examination in view of international phase work products in the application file impacts an applicant’s decision making and application inventory, as well as the quality and efficiency of examination. During or after the pilot program, the USPTO anticipates providing an avenue for participants to provide feedback regarding the pilot program.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
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