The USPTO has announced a new pilot program applicable only to U.S. national stage applications that will require applicants to confirm they want to proceed before their applications are assigned to an examiner. Unlike other pilot programs, the USPTO (not the applicant) will decide which applications are subject to this requirement. The USPTO is hopeful the pilot program will reduce the inventory of applications to be examined and thereby improve examination efficiency for other applications. However, applicants may be concerned that it will delay examination of national stage applications, increase prosecution costs, and short-change patent term adjustment awards.
The PCT Informed Examination Request (PIER) Pilot Program
The new “PCT Informed Examination Request (PIER)” pilot program will implement a request for examination-like process in selected U.S. national stage applications (filed under 35 U.S.C. § 371), requiring applicants 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 for 12 months under the program, or expressly abandon the national stage application.” According to the Federal Register Notice, the USPTO will issue a Request for Information under 37 C.F.R. § 1.105. Applicants must use (new) form PTO/SB/478 to reply within an extendable, two month period.
Applicants who elect to proceed with examination are invited (but not required) to “place the application in better condition for examination by filing a preliminary amendment.”
Applicants who elect to abandon their applications are reminded that a proper reply electing abandonment must be signed by an authorized individual (e.g., having power of attorney in the application) or by the applicant (if not a juristic entity). On the other hand, the Notice warns that failure to timely file a properly signed reply will result in abandonment, so it appears that even an improperly signed reply electing abandonment will result in the application being abandoned.
No Impact on Search and Examination Fees
Applicants who opt to abandon applications under the PIER pilot program will not be entitled to a refund of search and examination fees. According to the Notice, this is because the Requirement for Information issued under the program is an action under 35 U.S.C. § 132.
The PIERcing Impact on Patent Term Adjustment
The PIER pilot program will have two key impacts on patent term adjustment (PTA):
First, the USPTO has decreed that a Request for Information issued under the program is “an Office action under 35 U.S.C. § 132,” which means it will stop the 14-month PTA clock running against the USPTO from the national stage commencement date. Typically, this clock is stopped by a paper issued by the examiner (such as an Office action with a restriction requirement, Office action on the merits, or Notice of Allowance), but applications pulled into this pilot program will not be assigned to an examiner until after a reply is filed. Although the USPTO should award PTA under 35 U.S.C. § 154(b)(1)(ii) if it takes more than four months to issue the next Office action after the reply is filed, applications will lose out on PTA that otherwise would have been awarded for the entire delay until an Office action issued by an examiner.
Second, if the applicant elects to delay examination for 12 months under the program, the USPTO will treat the 12 month period as a period of “applicant delay” under the PTA rules, with the delay period beginning on the date of receipt of the reply requesting to delay examination and ending one year later.
PIERcing Questions About PIER
I have a few questions about the PIER pilot program that are not answered by the Notice.
- How will the USPTO select applications to include in the program?
- How many applications will be selected?
- Why is the USPTO targeting national stage applications in this program? Are national stage applications abandoned after the first Office action on the merits more frequently than other new applications?
- Is it permissible for the USPTO to treat a Request for Information under the program an Office action under 35 U.S.C. § 132?
35 U.S.C. § 132 states (emphasis added):
Whenever, on examination, any claim for a patent is rejected, or any objection or requirement made, the Director shall notify the applicant thereof, stating the reasons for such rejection, or objection or requirement, together with such information and references as may be useful in judging of the propriety of continuing the prosecution of his application; and if after receiving such notice, the applicant persists in his claim for a patent, with or without amendment, the application shall be reexamined. …. - What incentives do applicants have to elect abandonment?
