New USPTO “Pre-Docketing Notice” Pilot Program Could Streamline Examination

The USPTO announced a new pilot program that could streamline examination, improve examination efficiency, and help the USPTO use its examination resources more efficiently. The “Pre-Docketing Notice” pilot program also offers significant benefits to patent applicants, providing a timely opportunity to trim portfolios to save costs or align portfolios with current commercial objectives, which may have shifted in the months years since the patent application was filed.

The “Pre-Docketing Notice” Pilot Program

The USPTO’s current “First Office Action Pendency” statistics indicate the average time from an application’s filing date to the date of its first Office Action is about 22 months, but this pre-examination waiting period varies widely depending on the technology and examiner workloads. Although the USPTO recently restored its “first action estimator” functionality in Patent Center, an applicant has to proactively look up the estimated time to examination for each application, and I’ve seen estimates as long as 22 months. The “Pre-Docketing Notice” pilot program will give more timely notice to applicants that examination is going to commence soon, providing actionable information applicants can use to streamline the examination process to their benefit.

According to the USPTO announcement, under this pilot program the USPTO will send what it calls “an informational ‘Pre-Docketing Notice’” in pending nonprovisional utility patent applications about three months before the application is expected to be docketed to an examiner for substantive examination. Applicants can leverage this warning that the long preexamination clock is about to run out in several ways, depending on the circumstances of the application at issue.

• If the application is no longer of interest, the applicant can expressly abandon the application and possibly obtain a refund of certain fees if the conditions in 37 CFR 1.138(d) are satisfied. This makes this option much more attractive to applicants than the abandonment option under the PIER pilot program that does not support a refund.

• The applicant can review the claims and, if warranted, file a preliminary amendment to make any desired changes, such as to conform the claims to those being pursued in other jurisdictions, revise the claim language in view of current examination guidance, or present claims to specific embodiments currently of most interest (e.g., if priorities have changed since the application was filed).
• The applicant can review corresponding ex-U.S. cases, and if favorable patentability determinations have been received for desired claims, consider filing a request for examination under the USPTO’s Patent Prosecution Highway program.

• The applicant can confirm that an Information Disclosure Statement has been filed and that no additional information needs to be cited.
• The applicant can confirm that the named inventorship is correct and confirm that executed inventor declarations have been filed.

• The applicant can confirm that the applicant and assignee information is correct and confirm that an Assignment has been recorded.
• The applicant can plan and budget for prosecution costs in the coming months.

Another difference from the PIER pilot program is that no response to the Pre-Docketing notice is required. According to the USPTO, “applications will proceed to examination in the normal course if no action is taken.”

Get Ready for the Snap

It may be off-season for a football analogy, but I think of the “Pre-Docketing Notice” as a warning that the play clock is winding down and the Examiner is about to snap the ball based on the current record. This is the applicant’s chance to make sure the right players are on the field and get their formation set, call an audible to put better claims into play — or walk off the field to pursue express abandonment and a refund.

The USPTO will evaluate “how providing applicants with advanced notification … impacts an applicant’s decision making, application inventory, and quality and efficiency of examination.”  I’m interested to see how many applicants will take advantage of this opportunity to ensure they are starting the examination process in a strong position on the field.