PCT Informed Examination Request Pilot Program

Content

ACTION:

Notice.

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

     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 PIERPilot@uspto.gov.

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

  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

  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] BILLING CODE 3510-16-P

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