[Federal Register Volume 90, Number 205 (Monday, October 27, 2025)]
[Notices]
[Pages 48579-48582]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2025-19669]
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Notices
Federal Register
________________________________________________________________________
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. 205 / Monday, October 27, 2025 /
Notices
[[Page 48579]]
DEPARTMENT OF COMMERCE
Patent and Trademark Office
[Docket No.: PTO-P-2025-0182]
Streamlined Claim Set 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 Streamlined Claim Set Pilot Program to evaluate how
having a limited number of claims under examination impacts pendency
and examination quality. Under the pilot program, certain pending
utility patent applications that have no more than one independent
claim and no more than ten total claims may be eligible for expedited
examination, if the requirements specified in this notice are met. An
applicant may comply with the claim requirements of the pilot program
by filing a preliminary amendment before or with a petition to make
special under the pilot program. Applications accepted into the pilot
program will be advanced out of turn (i.e., accorded special status)
for examination until a first Office action is issued. This notice sets
forth the requirements of the pilot program and describes how the pilot
program will be administered. The USPTO anticipates that focusing
examination resources on already-filed, unexamined applications that
have a streamlined claim set will enhance efforts to reduce the USPTO's
inventory and pendency, and that the data gathered from this pilot
program will support designing future efforts to expedite patent
examination.
DATES: Pilot Duration: The Streamlined Claim Set Pilot Program will
accept petitions to make special beginning October 27, 2025, until
either October 27, 2026 or the date each Technology Center that
examines utility applications has been docketed at least approximately
200 applications accepted into the pilot program, whichever occurs
first. The USPTO recognizes that participation in the pilot program
across Technology Centers may vary. Disparities in participation across
Technology Centers, such as when the pilot program applications
accepted in a Technology Center significantly exceeds 200, may result
in early termination of the pilot program. The USPTO may, at its sole
discretion, terminate the pilot program for any reason, including
factors such as workload and resources needed to administer the
program, feedback from the public, and the effectiveness of the
program. If the pilot program is terminated, the USPTO will notify the
public. The USPTO, on its website, will specify the number of petitions
filed and the number of applications accepted into the pilot program
for each Technology Center. A petition filed under the pilot program
before the termination of the program will be considered on its merits.
FOR FURTHER INFORMATION CONTACT: Nicholas Hill, Legal Advisor, Office
of Patent Legal Administration, Office of the Deputy Commissioner for
Patents, at [email protected]; or Kristie A. Mahone, Senior Legal
Advisor, Office of Patent Legal Administration, Office of the Deputy
Commissioner for Patents, at [email protected]. For questions on
electronic filing, please contact the Electronic Business Center at
866-217-9197 or [email protected]. For questions relating to a particular
petition, please contact the Office of Petitions at 571-272-3282.
SUPPLEMENTARY INFORMATION: New patent applications ordinarily are taken
up for examination in the order of their U.S. filing date or national
stage entry date. See sections 708 and 1893.03(b) of the Manual of
Patent Examining Procedure (MPEP) (9th Edition, Rev. 01.2024, November
2024). The USPTO has procedures to advance out of turn (accord special
status) the examination of a utility application, provided that the
applicant files (1) a petition to make special, or (2) a request for
prioritized examination. See 37 CFR 1.102 and Discontinuation of the
Accelerated Examination Program for Utility Applications, 90 FR 24324
(June 10, 2025) (final rule).
To qualify for the Streamlined Claim Set Pilot Program, an
applicant must file a timely petition to make special under the pilot
program in an original (non-reissue),\1\ noncontinuing, utility
application filed under 35 U.S.C. 111(a) before October 27, 2025.
National stage applications filed under 35 U.S.C. 371 are not eligible
for participation in the pilot program. The petition to make special
under the pilot program must be filed with the petition fee under 37
CFR 1.17(h) before the issuance of a first Office action, including a
written restriction requirement. An applicant should not file a
petition to make special under the pilot program in an application that
is already docketed to an examiner. The USPTO will generally dismiss a
petition under the pilot program if the application has already been
docketed to a particular examiner in a Technology Center at the time
the petition is taken up for decision.
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\1\ See section 201.02 of the MPEP (`` `Original' application is
used in the patent statutes and rules to refer to an application
which is not a reissue application.'').
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To be eligible for the pilot program, an application must have no
more than one independent claim, no more than ten total claims, no
multiple dependent claims, and all claims other than the independent
claim must comply with the dependency format specified in this notice.
An applicant may comply with the claim requirements of the pilot
program by filing a preliminary amendment before or with the petition
to make special. The entry of such a preliminary amendment will not,
however, be contingent upon the grant of the petition to make special.
An applicant must also certify that no inventor or joint inventor has
been named as the inventor or a joint inventor on more than three other
nonprovisional applications in which a petition to make special under
this program has been filed. Applications accepted into the program
will be advanced out of turn (i.e., accorded special status) for a
first Office action. After the first Office action, the application
will no longer be treated as special during examination.
Definition
Noncontinuing application: A noncontinuing application is an
application that is not a continuation, divisional, or continuation-in-
part application filed under the conditions specified in 35 U.S.C. 120,
121, 365(c),
[[Page 48580]]
or 386(c) and 37 CFR 1.78. See section 201.02 of the MPEP.
Any application that claims the benefit of the filing date of a
prior-filed application that is a nonprovisional U.S. application and/
or international application designating the United States is not
eligible for participation in the pilot program. Claiming the benefit
under 35 U.S.C. 119(e) of one or more prior provisional applications or
claiming a right of priority under 35 U.S.C. 119(a)-(d) or (f) to one
or more foreign applications will not affect eligibility for the
program.
Part I. Requirements To Participate
The petition to make special must be properly signed and
accompanied by the fee set forth in 37 CFR 1.17(h), as required by 37
CFR 1.102(d). The patent application and the petition must meet the
following requirements.
(1) Types of Applications and Time for Filing Petition
The pilot program is available for original, noncontinuing, utility
applications filed under 35 U.S.C. 111(a). The application must have an
actual filing date that is before October 27, 2025. The petition to
make special under the pilot program must be filed before the issuance
of a first Office action, including a written restriction requirement.
Because preparing a first Office action may begin soon after an
application is docketed to an examiner, the USPTO will, as stated
above, generally dismiss a petition under the pilot program if the
application has already been docketed to a particular examiner in a
Technology Center at the time the petition is taken up for decision.
(2) The USPTO Form Required for Filing Petition
Form PTO/SB/472, titled ``CERTIFICATION AND PETITION TO MAKE
SPECIAL UNDER THE STREAMLINED CLAIM SET PILOT PROGRAM,'' must be used
to submit the petition under the pilot program (available at
www.uspto.gov/PatentForms). Form PTO/SB/472 contains the certification
statements and agreement required for participation in the pilot
program, and information about the required fee. Use of the form will
enable the USPTO to quickly identify and timely process the petition.
In addition, use of the form will help applicants understand and comply
with the petition requirements of the pilot program. Under 5 CFR
1320.3(h), form PTO/SB/472 does not collect ``information'' within the
meaning of the Paperwork Reduction Act of 1995.
(3) Claim Limit, No Multiple Dependent Claims, Dependency Format, and
Agreement
When the petition to make special is filed, the application must
contain no more than one independent claim, no more than ten total
claims, and no multiple dependent claims. All claims other than the
single independent claim must comply with the dependency format
specified below.
For applications accepted into the pilot program, the examiner may
refuse entry of any amendment that, if entered, would result in a set
of pending claims with more than one independent claim, more than ten
total claims, or a multiple dependent claim. The examiner may also
refuse entry of any amendment that would result in a claim other than
the independent claim being noncompliant with the dependency format
specified in this notice. An applicant may meet the claim requirements
of the pilot program by filing a preliminary amendment in compliance
with 37 CFR 1.121 before or with the petition to make special. See
section 714 of the MPEP, subsection II, for more information on the
manner of making amendments under 37 CFR 1.121. The preliminary
amendment may accompany the petition to make special. Preliminary
amendments filed after the petition to make special is filed will not
be considered when deciding the petition. A preliminary amendment
reducing the number of claims will not entitle an applicant to a refund
of previously paid excess claims fees. See section 607 of the MPEP,
subsection III.
To comply with the dependency format for this pilot program, a
claim must be in proper dependent form under 35 U.S.C. 112(d). That is,
the claim must refer to a previous claim, include every limitation of
the previous claim referred to, and then specify a further limitation
of the subject matter of the previous claim. See section 608.01(n) of
the MPEP, subsection III. In addition, to comply with the dependency
format for this pilot program, the reference to the previous claim must
appear in the preamble, and the claim must be directed to the same
statutory class of invention as the independent claim.
For example, consider a claim set having independent claim 1, which
recites ``A widget comprising A and B,'' and claim 2.
If claim 2 recites ``The widget of claim 1 further
comprising C,'' the claim would comply with the dependency format for
the pilot program.
If claim 2 recites ``A fastener for use in securing the
widget of claim 1,'' the claim would not comply with the dependency
format for the pilot program because it does not include all of the
limitations of the previous claim.
If claim 2 recites ``A device comprising the widget of
claim 1 fastened to a gadget,'' the claim would not comply with the
dependency format for the pilot program because the reference to the
previous claim does not appear in the preamble.
If claim 2 recites ``A method of producing the widget of
claim 1,'' the claim would not comply with the dependency format for
the pilot program because claim 2 is not directed to the same statutory
class of invention as the independent claim.
If the application is granted special status under the program, the
applicant must agree to comply with the claim requirements of the pilot
program during the remainder of pendency.
(4) Publication Requirement for Applications
If there is a nonpublication request in the application, the
applicant must file a rescission of the nonpublication request no later
than the time the petition to make special is filed. The applicant may
use form PTO/SB/36 to rescind the nonpublication request.
(5) Electronic Filing of Petition and Application Required
The petition to make special may be made only by filing form PTO/
SB/472, which must be filed electronically using the USPTO's Patent
Center (at www.uspto.gov/PatentCenter). Applicants must file the
petition using the document description (``Petition for Streamlined
Claim Set Pilot'') indicated on form PTO/SB/472. In addition, the
application must have been filed using the USPTO patent electronic
filing system (currently Patent Center).
(6) Use of DOCX Format for the Specification, Claim(s), and Abstract
DOCX format delivers a number of benefits, including increased
efficiencies and higher data quality, that enhance the USPTO's ability
to expedite examination. Thus, for an application to be eligible for
the pilot program, the specification, claim(s), and abstract must be in
compliance with the USPTO requirements for submission in DOCX format at
the time the application was filed. See 37 CFR 1.16(u).
(7) Filing Limitations
An applicant may file a petition to participate in the pilot
program if no inventor or joint inventor has been named as the inventor
or a joint inventor on more than three other nonprovisional patent
applications in
[[Page 48581]]
which a petition to make special under this pilot program has been
filed. Therefore, if the inventor or any one of the joint inventors of
the instant application has been named as the inventor or a joint
inventor on more than three other nonprovisional applications in which
a petition under this pilot program has been filed, then a petition for
the instant application may not be appropriately filed. Form PTO/SB/472
includes a certification statement that no inventor or joint inventor
has been named on more than three other nonprovisional applications in
which a petition to make special under the pilot program has been
filed.
Part II. Internal Processing of the Petition Under the Pilot Program
If applicant files a petition to make special under the pilot
program, the USPTO will decide the petition once pre-examination
processing of the application is completed. If the petition is granted,
the application will be accorded special status under the pilot
program. The application will be placed on an examiner's special docket
until issuance of a first Office action. After the first Office action,
the application will no longer be treated as special during
examination. For example, if an amendment is filed after the first
Office action, it will be placed on the examiner's regular amended
docket.
Meeting the requirements in Part I of this notice will not ensure
acceptance into the pilot program. The USPTO will generally dismiss a
petition under the pilot program if the application has already been
docketed to an examiner in a Technology Center at the time the petition
is being reviewed for decision. The USPTO will not refund the 37 CFR
1.17(h) petition fee if an application is not accepted into the pilot
program. This includes occurrences where the petition is dismissed
because the application has been docketed to an examiner when the
petition is taken up for decision despite being filed before the
application was docketed to the examiner. See section 607.02 of the
MPEP.
The purpose of the pilot program is to assess the effect of having
a limited number of claims under examination on pendency and
examination quality. As such, the USPTO intends to continue accepting
applications into the pilot program until each Technology Center that
examines utility applications has been docketed at least approximately
200 pilot applications. This is to make certain that the data collected
during the pilot program is a balanced representation of examination
across all technology areas. The USPTO will indicate on its website the
total number of petitions filed and the number of applications accepted
into the pilot program for each Technology Center.
If the petition to make special under the pilot program does not
comply with the requirements set forth in this notice, the USPTO will
dismiss the petition. 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. An
applicant may file only a single petition under the pilot program for
an application.
Part III. Requirements for Restriction
The USPTO anticipates fewer restriction requirements than in non-
pilot program applications due to the claim set requirements of the
pilot program. If the examiner believes that a requirement for
restriction is appropriate, including an election of species
requirement, the examiner should try to contact the applicant in
accordance with the procedure for telephone restriction practice set
forth in section 812.01 of the MPEP. If the applicant does not make an
election (for example, does not reply to a request for a telephonic
interview within five business days of the examiner's request), the
examiner will mail a written restriction requirement, and the
application will no longer be treated as special. In such cases, the
written restriction requirement would be considered the ``first Office
action'' in terms of this pilot program.
Part IV. Office Actions and Replies Under the Pilot Program
Applications that are accorded special status under the pilot
program will be placed on an examiner's special docket until a first
Office action is issued. After the first Office action, the application
will be entered into the examiner's regular docket.
The time periods set for reply in Office actions for an application
granted special status under the pilot program will be the same as
those set forth in section 710.02(b) of the MPEP. A reply to an Office
action must be fully responsive to the rejections, objections, and
requirements made by the examiner. Any amendment filed in reply to an
Office action may be treated as not fully responsive if it attempts to
(1) add claims that would result in more than one independent claim
and/or more than ten total claims pending in the application; (2) add
any multiple dependent claim(s); or (3) present a claim, other than the
independent claim, that does not comply with the dependency format set
forth in Part I, section 3, of this notice. If a reply to a nonfinal
Office action is not fully responsive for failing to comply with the
pilot program's claim requirements but is a bona fide attempt to
advance the application to final action, the examiner may, at the
examiner's discretion, provide a shortened statutory period of two
months for the applicant to provide a fully responsive reply.
Extensions of this time period under 37 CFR 1.136(a) to the notice of
nonresponsive amendment will be permitted, but in no way can any
extension carry the date for reply to this notice beyond the maximum
period of SIX MONTHS set by statute (35 U.S.C. 133). However, any
further nonresponsive amendment typically will not be treated as bona
fide, and therefore, the time period set in the prior notice will
continue to run.
Part V. After-Final and Appeal Procedures
Any amendment, affidavit, or other evidence after a final Office
action and prior to an appeal must comply with 37 CFR 1.116. During the
appeal process, the application will be treated in accordance with the
normal appeal procedure. See MPEP Chapter 1200.
Part VI. Proceedings Outside of the Normal Examination Process
If an application becomes involved in proceedings outside of the
normal examination process (for example, a secrecy order, derivation
proceeding, or petition under 37 CFR 1.181 through 1.183), the
application will not be under special status during those proceedings.
For example, while under a secrecy order, the application will be
treated in accordance with the normal secrecy order procedures and will
not be in special status under the pilot program. Once the proceeding
outside of the normal examination process is completed, the application
will continue in special status, as described above in this notice.
Part VII. Withdrawal From the Pilot Program
There is no provision for withdrawal from the pilot program. An
applicant may abandon an application that has been granted special
status under the pilot program in favor of a continuing application.
However, a continuing application will not be granted special status
based on the petition filed in the parent application. Only
noncontinuing applications are eligible for this pilot program.
[[Page 48582]]
Part VIII. Evaluation of the Pilot Program
The pilot program is designed to allow the USPTO to evaluate how
having a limited number of claims under examination affects pendency
and examination quality. Accordingly, the USPTO intends to collect data
on the progression of applications accepted into the pilot program
throughout the examination process. During or after the pilot program,
the USPTO will provide avenues for participants to provide feedback on
their experience with the pilot program. As applicable, the USPTO will
follow the United States Government Accountability Office's (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 Recipient
Reporting Burden, GAO-16-438 (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. 2025-19669 Filed 10-24-25; 8:45 am]
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