[Federal Register Volume 90, Number 193 (Wednesday, October 8, 2025)]
[Notices]
[Pages 48161-48163]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2025-19493]
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Notices
Federal Register
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This section of the FEDERAL REGISTER contains documents other than rules
or proposed rules that are applicable to the public. Notices of hearings
and investigations, committee meetings, agency decisions and rulings,
delegations of authority, filing of petitions and applications and agency
statements of organization and functions are examples of documents
appearing in this section.
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Federal Register / Vol. 90, No. 193 / Wednesday, October 8, 2025 /
Notices
[[Page 48161]]
DEPARTMENT OF COMMERCE
Patent and Trademark Office
[Docket No.: PTO-P-2025-0011]
Automated Search Pilot Program
AGENCY: United States Patent and Trademark Office, Department of
Commerce.
ACTION: Notice.
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SUMMARY: The United States Patent and Trademark Office (USPTO) is
implementing the Automated Search Pilot Program to evaluate the impact
of sharing the results of an automated search prior to examination of
an original, noncontinuing, nonprovisional utility patent application.
Conducting an automated search and sending an Automated Search Results
Notice (ASRN) to the applicant will provide the applicant with an
earlier communication regarding potential prior art issues in their
application. To participate in this new pilot procedure, the applicant
must file a petition accompanied by a petition fee. With this pilot
program, the USPTO aims to ascertain the impact of sharing a pre-
examination search report on prosecution by applicants, evaluate the
scalability of generating ASRNs, and collect data to inform next steps.
This notice is to inform applicants of the pilot program and to provide
them with important details regarding the program, including how to
participate.
DATES: The Automated Search Pilot Program will accept petitions to
participate in the program beginning October 20, 2025, until either
April 20, 2026, or the date that each Technology Center (TC) that
examines utility applications is docketed at least 200 applications
accepted into this program, whichever occurs first. The USPTO's plan is
to accept petitions in at least 1,600 patent applications. The USPTO
may extend this program to accept petitions to receive an ASRN in
additional patent applications if it determines that more information
is needed to evaluate the effectiveness of the program.
The USPTO may, at its sole discretion, terminate this program for
any reason, including factors such as workload and resources needed to
administer the program, feedback from the public, and effectiveness of
the program. The USPTO will publish a notification on its website prior
to terminating the program advising the public of when petitions to
participate in the program will no longer be accepted.
FOR FURTHER INFORMATION CONTACT: Questions or comments regarding this
pilot program may be directed to: Eugenia A. Jones, Senior Legal
Advisor, Office of Patent Legal Administration, at 571-272-7727; or
Kristie A. Mahone, Senior Legal Advisor, Office of Patent Legal
Administration, at 571-272-9016; or [email protected].
SUPPLEMENTARY INFORMATION: The USPTO is implementing the Automated
Search Pilot Program to evaluate the impact of sharing the results of
an automated search prior to examination of an application. Applicants
who wish to participate in the program must file a petition under 37
CFR 1.182 using the USPTO form discussed in Part II of this notice,
accompanied by the petition fee set forth in 37 CFR 1.17(f). If the
petition is granted, the USPTO will conduct an automated search and
send an Automated Search Results Notice (ASRN) to the applicant. The
ASRN will provide the applicant with an earlier communication regarding
potential prior art issues in their application. The earlier
communication may provide the applicant with an opportunity to assess
prior art issues before substantive examination and make a more
informed decision on how to proceed with the application. The ASRN also
provides a new pathway to identify relevant prior art for patent
examiners to improve examination quality and efficiency. Applicants are
not required to respond to the ASRN. However, the applicant may opt to
place the application in better condition for examination by filing a
preliminary amendment, requesting deferral of examination, or filing a
petition for express abandonment to seek a refund of certain fees if
examination is no longer desired.
The USPTO plans to use the results of this program to ascertain the
impact of sharing the results of a pre-examination search on
prosecution by applicants, evaluate the scalability of generating
ASRNs, and collect data to inform next steps.
Part I. Pilot Program Eligibility
Only original, noncontinuing, nonprovisional utility applications
filed under 35 U.S.C. 111(a) on or after October 20, 2025, and on or
before April 20, 2026, are eligible to participate in the pilot
program. Thus, the following applications will not be included:
international applications that have entered the national stage under
35 U.S.C. 371; plant applications; design applications; and reissue
applications. In addition, continuing (i.e., continuation, divisional,
or continuation-in-part) applications will not be included.
To be eligible for this program, the application must be filed
electronically using the USPTO's Patent Center (at https://patentcenter.uspto.gov). The specification, claim(s), and abstract of
the application must conform to the USPTO requirements for DOCX
submission at the time the application is filed.
Applicant must also enroll in the Patent Center Electronic Office
(e-Office) Action Program to participate in the Automated Search Pilot
Program. Information on how to enroll in the Patent Center e-Office
Action program is available at www.uspto.gov/patents/apply/checking-application-status/e-office-action-program.
The USPTO plans to accept at least 1,600 patent applications
distributed across the Technology Centers (TCs) that examine utility
applications, including at least 200 applications per TC that examines
utility applications, but appreciates that participation levels across
TCs may vary. Disparities in participation across TCs, such as where
the number of applications accepted in some TCs significantly exceeds
200, may prompt early termination of the program.
The USPTO will, from time to time, update its website to indicate
the total number of petitions to participate in the pilot program that
have been received and the total number of petitions granted, including
a breakdown of the number of petitions granted per TC. The USPTO will
also indicate the expected
[[Page 48162]]
closure date of the program, after which no newly filed petitions will
be accepted.
Part II. Petition Under 37 CFR 1.182 To Participate in the Pilot
Program
To participate in this pilot program, applicant must file a
properly signed petition using Form PTO/SB/470, titled ``CERTIFICATION
AND PETITION UNDER 37 CFR 1.182 TO PARTICIPATE IN THE AUTOMATED SEARCH
PILOT PROGRAM.'' The form must be filed electronically in Patent Center
on the filing date of the application and be accompanied by the
petition fee set forth in 37 CFR 1.17(f). Form PTO/SB/470 contains the
necessary petition and certifications that the pilot program
eligibility conditions discussed in Part I of this notice have been
met. Use of the form will enable the USPTO to quickly identify and
timely process the petition. Under 5 CFR 1320.3(h), Form PTO/SB/470
does not collect ``information'' within the meaning of the Paperwork
Reduction Act of 1995. The form is available at www.uspto.gov/PatentForms.
The USPTO will not render a decision on the petition until the
application has completed pre-examination processing. If the petition
is grantable, the USPTO will issue a decision granting the petition
indicating that the application has been accepted into the program and
that an ASRN will be generated. The decision granting the petition will
be separate from the ASRN. If the application does not meet the
eligibility requirements for the program, the USPTO will issue a
decision dismissing the petition that will notify the applicant that an
ASRN will not be generated.
In view of the limited duration of the pilot program and the
limited number of applications being accepted into the pilot program,
an applicant will not have an opportunity to correct deficiencies in
the petition after a petition is dismissed. Applicant may file only a
single petition under the pilot program for an application, and a
second or subsequent petition filed in the application will be
dismissed.
Part III. Automated Search
The automated search will be conducted using an internal Artificial
Intelligence (AI) tool. The AI tool uses the classification of the
application under the Cooperative Patent Classification (CPC) system,
as well as the specification, including the claims and abstract, of the
application as contextual information. The AI tool will use the
contextual information to find similar information in publicly
available documents located in a number of databases available to the
USPTO, including U.S. Patents, U.S. Pre-Grant Publications (PG-Pubs),
and Foreign Image and Text (FIT). The FIT database includes
publications from a number of foreign patent authorities. The AI tool
will rank the returned documents from most to least relevant.
The AI models supporting the automated search are trained using
publicly available patent data, including text of patents and published
applications, patent classifications, document citations, and human-
rated similarity. The training data excludes applicant, inventor, and
assignee information because this information may introduce potential
biases in the model. The USPTO has implemented measures for the AI tool
to ensure data security and maintain patent application confidentiality
as required by 35 U.S.C. 122(a). See New Artificial Intelligence
Functionality in PE2E Search, 1504 OG 359 (November 15, 2022).
Part IV. Automated Search Results Notice
The USPTO will send an ASRN to the applicant and place a copy in
the application file. The ASRN is not considered a notification under
35 U.S.C. 132, and the applicant is not required to respond to the
ASRN.
The ASRN will include a listing of up to 10 documents returned by
the AI tool listed in descending order of relevance as determined by
the AI tool. Copies of the documents cited in the ASRN will not be
placed in the file. The ASRN will further include a search string that
may be entered into the USPTO's Patent Public Search (PPUBS) tool,
available at www.uspto.gov/patents/search/patent-public-search, to
easily retrieve copies of the cited U.S. Patents and PG-Pubs. Copies of
foreign patent documents are not currently available in PPUBS. Tools
for accessing a number of foreign patent documents are available on the
USPTO website at www.uspto.gov/patents/search. The ASRN will have
content similar to the content of Form PTO-892 and will include the
document number, date, inventor name, and CPC information.
Part V. Implementation Information
The ASRN will be generated after the application has undergone pre-
examination processing and a petition to participate in the program has
been granted, but prior to examination by a USPTO patent examiner. The
results of the automated search may inform a decision on how to proceed
with the application. For example, the applicant may file a preliminary
amendment under 37 CFR 1.115. Any such preliminary amendment should be
submitted as soon as possible to reduce the likelihood that the
amendment unduly interferes with preparation of the first Office
action. See 37 CFR 1.115 and section 714.01(e) of the Manual of Patent
Examining Procedure (MPEP) (9th Edition, Rev. 01.2024, November 2024).
Alternatively, the applicant may submit a petition for express
abandonment under 37 CFR 1.138(d) to seek a refund of the search fee
and any excess claims fees, or a request for deferral of examination
under 37 CFR 1.103(d). A petition for express abandonment or a request
for deferral of examination must be timely submitted. See MPEP 711.01,
subsection III and MPEP 709, subsection I.
The examiner will consider the documents listed on the ASRN ``in
the same manner as other documents in Office search files are
considered by the examiner while conducting a search of the prior art
in a proper field of search.'' See MPEP 609. There is no requirement
for the examiner to list the documents from the ASRN on Form PTO-892
unless the document has been relied upon in a prior art rejection.
Also, there is no requirement for the applicant to provide a separate
listing of the documents. The references listed on the ASRN will appear
on the face of the patent if made of record by the examiner on a Form
PTO-892 or cited by the applicant on an Information Disclosure
Statement in compliance with 37 CFR 1.97 and 1.98. See MPEP 707.05 and
MPEP 1302.12.
Part VI. Evaluation of the Pilot Program
The pilot program is designed to evaluate the impact of sharing the
results of an automated search prior to examination of a patent
application. The USPTO will evaluate the scalability of generating and
mailing the ASRN, and acquire information to inform next steps. For
example, the USPTO may collect data as to the usefulness of the ASRN
for applicants in assessing patentability early in the examination
process. During or after the pilot program, the USPTO anticipates
providing an avenue for participants to provide feedback regarding the
pilot program. As applicable, the USPTO will follow the GAO's Leading
Practices for Effective Pilot Design, including (1) establishing clear
objectives, (2) collecting relevant data, (3) evaluating outcomes, (4)
considering scalability, and (5) ensuring stakeholder communication.
See GAO, Data Act: Section 5 Pilot Design Issues Need to Be Addressed
to Meet Goal of Reducing
[[Page 48163]]
Recipient Reporting Burden, GAO-16-438 (Washington, DC; April 19,
2016).
John A. Squires,
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
[FR Doc. 2025-19493 Filed 10-7-25; 8:45 am]
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