[Federal Register Volume 91, Number 68 (Thursday, April 9, 2026)]
[Notices]
[Pages 17949-17952]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2026-06903]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
[Docket No.: PTO-P-2026-0199]
PCT Informed Examination Request 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 or
Office) is implementing the PCT Informed Examination Request (PIER)
Pilot Program to assess the inventory and efficiency impacts of
requiring an applicant to request examination in view of applicable
Patent Cooperation Treaty (PCT) international phase work products. The
USPTO will select certain
[[Page 17950]]
national stage patent applications for the program. In an application
selected for the program, the USPTO will issue a requirement for
information referencing the applicable international phase work
products and requiring the applicant to indicate whether the applicant
opts to: proceed with examination (with the option to place the
application in better condition for examination by filing a preliminary
amendment), delay examination, or expressly abandon the application in
view of the international phase work products. The applicant must
respond to the requirement for information to avoid abandonment of the
application. The USPTO expects that requiring applicants to indicate
that examination is desired upon review of international phase work
products present in the application file will contribute to efforts to
reduce inventory and pendency.
DATES: The USPTO will select applications to participate in the PIER
Pilot Program beginning April 9, 2026 until April 9, 2027. The USPTO
may extend the program to select 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 the 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. If the program is
terminated, the USPTO will notify the public on its website.
FOR FURTHER INFORMATION CONTACT: Erin M. Harriman, Senior Legal
Advisor, at (571) 272-7747; Eugenia A. Jones, Senior Legal Advisor, at
(571) 272-7727; or Kristie A. Mahone, Senior Legal Advisor, at (571)
272-9016, all from the Office of Patent Legal Administration, Office of
the Deputy Commissioner for Patents or via email addressed to
[email protected].
SUPPLEMENTARY INFORMATION: The PIER Pilot Program is designed to assess
the inventory and efficiency impacts of requiring applicants to request
examination in view of applicable Patent Cooperation Treaty (PCT)
international phase work products. The USPTO will select certain
applications for the program, as identified in Part I of this notice,
from the inventory of unexamined national stage applications.
For selected applications that entered the national stage under 35
U.S.C. 371, the USPTO will issue a requirement for information
pertaining to the international phase work products in the national
stage file. International phase work products include the International
Search Report (ISR) and any opinion expressed in a Written Opinion (WO)
or International Preliminary Report on Patentability (IPRP). Thus, the
requirement for information will reference applicable PCT international
phase work products in the application file and require the applicant
to indicate, based on review of international phase work products
present in the application file, whether the applicant opts to proceed
with the national phase of examination, delay the national phase of
examination under the program, or expressly abandon the national stage
application.
If the applicant desires to proceed with examination of an
application selected for the program, the applicant must submit a
timely and complete reply to the requirement for information using the
reply form described in Part IV of this notice. The reply form
references applicable PCT international work products and provides the
applicant with the ability to indicate whether the applicant opts to:
proceed with examination, delay examination for 12 months from the date
of receipt of the request to delay examination, or expressly abandon
the application. A delay in examination under the program provides the
applicant with additional time to consider the value and commercial
potential of their invention at no additional cost. If the applicant
opts to proceed with examination, with or without delay, the applicant
may additionally opt to place the application in better condition for
examination by filing a preliminary amendment. Alternatively, if the
applicant opts not to proceed with examination, the applicant may file
a request to expressly abandon the application. A complete reply to a
requirement for information issued under the program requesting
examination will result in the application being placed on an
examiner's docket.
Part I. Pilot Program Eligibility
The USPTO will select certain unexamined national stage
applications for the PIER Pilot Program intermittently until the close
of the program. To be selected for the program, the application must be
an international application that entered the national stage under 35
U.S.C. 371. Applications filed under 35 U.S.C. 111(a), including plant
applications, design applications, and reissue applications, will not
be selected.
Applications entered into the program are at the sole discretion of
the USPTO. The USPTO will not grant any petition to participate,
abstain, or be removed from the program.
Part II. International Phase Work Products for Applications Entering
the National Stage Under 35 U.S.C. 371
For selected applications that have entered the national stage, the
USPTO will issue a requirement for information as discussed in Part III
of this notice. Typically, a national stage application file includes
the International Search Report (ISR) and the Written Opinion prepared
by the International Searching Authority (WO/ISA). The ISR lists the
prior art with relevancy indicators (in the form of citation categories
as provided for in WIPO Standard ST. 14), and the WO/ISA provides a
preliminary, non-binding assessment of patentability in view of the ISR
references. See sections 1893.03(e) and 1845 of the Manual of Patent
Examining Procedure (MPEP) (9th Edition, Rev. 01.2024, November 2024).
The national stage file may also contain any Supplemental International
Search (SIS) requested by the applicant. See MPEP 1856. Further, if the
applicant timely filed a demand for preliminary examination under
Chapter II of the PCT, the International Preliminary Report on
Patentability (IPRP) (Chapter II of the PCT) will also be included in
the national stage file. See MPEP 1893.03(e).
Part III. Pilot Program Requirement for Information Under 37 CFR 1.105
Only national stage applications that have completed pre-
examination processing will be selected for the program. In selected
applications, the USPTO will issue a requirement for information under
37 CFR 1.105 that will be placed in the file. A requirement for
information issued under the program is an Office action under 35
U.S.C. 132, but not a first action on the merits. The requirement for
information will set a two-month period for reply, which the applicant
may extend for up to six months in accordance with 37 CFR 1.136(a). See
MPEP 704.13.
A requirement for information under the program will require the
applicant to indicate whether the applicant opts to proceed with
examination, delay examination for 12 months from the date of receipt
of the request to delay examination, or expressly abandon the
application in accordance with 37 CFR 1.138. To avoid abandonment of an
application selected for the program, the applicant must submit a
complete and timely reply using the USPTO form described in Part IV of
this notice. A complete reply to a requirement for information
requesting to proceed with examination will result in the application
being placed on an examiner's docket. A complete reply
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requesting delay of examination will result in the application being
placed on an examiner's docket after the expiration of the 12-month
delay period. Thus, an applicant who desires to prosecute the
application will have greater control as to when their application will
be examined.
A delay of examination under the PIER Pilot Program is distinct
from a suspension or deferral request under 37 CFR 1.103. The option to
delay examination under the program affords the applicant a non-
terminable 12-month period after the date of receipt of the request to
delay examination under the program to assess the viability of the
invention, without the processing fee required for a suspension or
deferral of examination. 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). The delay period begins on the date of the receipt of the
request to delay examination and ends on the one year anniversary date
of the request. In addition, the mailing of the requirement under 37
CFR 1.105 will be considered the date that the Office met the
requirement of 35 U.S.C. 154(b)(1)(A)(i) and 37 CFR 1.702(a)(1). If the
applicant desires to avoid further prosecution costs, the applicant may
request to expressly abandon the application under 37 CFR 1.138(a) in
reply to the requirement for information. The applicant may also file a
petition under 37 CFR 1.138(c) for express abandonment to avoid
publication of the application. However, such a petition must be
submitted as a separate request (e.g., form PTO/AIA/24A) accompanying
the reply to the requirement for information. A petition for express
abandonment under 37 CFR 1.138(c) generally will not be effective to
stop publication of the application unless it is recognized by the
appropriate Office personnel more than four weeks prior to the
projected publication date. Where an applicant files a request to
expressly abandon the application under 37 CFR 1.138(a) in reply to the
requirement for information, such a request will still be granted (if
properly signed) even if the petition under 37 CFR 1.138(c) cannot be
granted. Because a requirement for information is an action under 35
U.S.C. 132, express abandonment under 37 CFR 1.138(d) to obtain a
refund of the search and excess claims fees is unavailable. A
registered practitioner acting in a representative capacity is not
authorized to sign an express abandonment except when filing a
continuing application. See 37 CFR 1.138(b).
Part IV. Replying to a Pilot Program Requirement for Information
An applicant must use form PTO/SB/478 to reply to a requirement for
information under the program. If filing the PTO/SB/478 electronically
in Patent Center (at https://patentcenter.uspto.gov), the applicant
must use the document description provided on the form to ensure that
the appropriate area of the USPTO is notified of the reply. Under 5 CFR
1320.3(h), Form PTO/SB/478 does not collect ``information'' within the
meaning of the Paperwork Reduction Act of 1995. Use of the form will
enable the USPTO to quickly identify and timely process the applicant's
reply. The form will be available at: www.uspto.gov/PatentForms.
Form PTO/SB/478 includes a reference to applicable PCT
international work products. The form also includes a series of
selectable checkboxes for the applicant to indicate whether a request
is being made to proceed with examination, delay examination, or
expressly abandon the application. If the applicant opts to proceed
with examination (including after the 12-month delay), the applicant
may additionally file a preliminary amendment in compliance with 37 CFR
1.115. Alternatively, if the applicant selects the option to expressly
abandon the application, it is recommended that, in addition to
selecting the express abandonment checkbox, the applicant also include
a separate request for express abandonment under 37 CFR 1.138, (e.g.,
form PTO/AIA/24) to facilitate processing. As discussed above, a
registered practitioner acting in a representative capacity is not
authorized to sign an express abandonment except when filing a
continuing application. See 37 CFR 1.138(b). Therefore, the only time
the USPTO will accept form PTO/SB/478 with the express abandonment box
selected and signed by an individual who is acting in a representative
capacity is when a separate letter of express abandonment is also
submitted indicating that the application is expressly abandoned in
favor of a continuing application (e.g., form PTO/AIA/24). In all other
instances, when the express abandonment box is selected, form PTO/SB/
478 must be signed by an individual authorized under 37 CFR 1.33(b)(1)
or (b)(3), that is by the patent practitioner of record, or by the
applicant who is not a juristic entity. See MPEP 711.01 for more
information on express abandonment.
Additionally, as discussed above, the applicant may also file a
petition under 37 CFR 1.138(c) for express abandonment to avoid
publication of the application. However, such a petition must be
submitted as a separate request (e.g., form PTO/AIA/24A). See Part V of
this notice for information on treatment of an incomplete reply to a
requirement for information under the program.
Prior to selecting the express abandonment checkbox (Item 2c) on
the PTO/SB/478, it is imperative that the attorney or agent of record
exercise every precaution in ascertaining that the abandonment of the
application is in accordance with the desires and best interests of the
applicant. See MPEP 711.01. Note that where the applicant deliberately
permits an 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 CFR 1.137. See MPEP 711.03(c), subsection
II.C.
Part V. Internal Processing of an Applicant's Reply to a Pilot Program
Requirement for Information
Failure to timely submit a complete, properly signed PTO/SB/478
will result in abandonment of the application. See MPEP 711.02. USPTO
personnel will review PTO/SB/478 and any accompanying documents (e.g.,
preliminary amendment, petition under 37 CFR 1.138(c)).
In order for an applicant's reply to be considered complete, the
PTO/SB/478 must be properly signed and only one of the provided
checkboxes must be selected. Note that a reply under 37 CFR 1.105(a)(3)
that states that the information required to be submitted is unknown to
or is not readily available would not be considered a proper reply
because, if the applicant has not determined whether they would like to
move forward with examination, the applicant has the option to delay
examination for a period of 12 months.
An incomplete or improperly signed PTO/SB/478 will be handled in
substantially the same manner as an amendment not fully responsive to a
non-final Office action. See MPEP 704.12(c) and MPEP 714.03. If an
applicant's reply is a bona fide attempt to advance action on the
application, the applicant will be notified of the deficiency and may
be given a shortened statutory period of two months to provide a fully
responsive reply. Extensions of this time period set
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by the notice of nonresponsive reply will be permitted under 37 CFR
1.136(a), 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. See
35 U.S.C. 133. However, any further nonresponsive reply typically will
not be treated as bona fide and, therefore, the time period set in the
prior notice will continue to run.
If the applicant has submitted a complete reply opting to proceed
with examination, the application will be placed on an examiner's
docket. Alternatively, if an applicant's complete reply includes a
request for delay of examination, the USPTO will notify the applicant
that the request to delay examination under the program has been
approved. Once a request to delay examination under the program has
been approved, the applicant will not be permitted to terminate the
delay period early. The application will be docketed for examination
after the expiration of 12 months from the date of receipt of the
request to delay examination under the program.
When examining an application that entered the national stage under
35 U.S.C. 371, the examiner will consider all U.S patent applications,
U.S. patent application publications, and U.S. pending applications
cited in the ISR and stored in the USPTO's Image File Wrapper (IFW)
system. See MPEP 609.03. Other cited documents will be considered by
the examiner if form PCT/DO/E.O./903 indicates that the ISR and the
copies of such documents are present in the national stage file. See
id. The examiner is not required to list references cited in the ISR on
a PTO-892 and there is no requirement for the applicant to separately
list the references. See id. References cited in the PCT international
phase will only be printed on a resulting patent if the applicant cites
the references on an IDS in compliance with 37 CFR 1.97 and 1.98. See
id. and MPEP 609.06.
Part VI. Evaluation of the Pilot Program
The pilot program is designed to assess the inventory and
efficiency impacts of requesting examination in view of applicable PCT
international phase work products. 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. 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 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. 2026-06903 Filed 4-8-26; 8:45 am]
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