Key Points

• New pilot program requires action. The USPTO has launched the PCT Informed Examination Request (PIER) Pilot Program, which will compel applicants of certain unexamined U.S. national stage applications that have completed pre-examination processing to decide whether to proceed with examination, delay examination, or expressly abandon the application.
• Improved Efficiency. PIER Pilot Program expected to reduce application inventory and pendency.
• No opt-in, no opt-out. The USPTO will select applications for the program at its sole discretion. Applicants cannot voluntarily participate, abstain, or withdraw an application from the program.
• Respond or lose your application. Applicant must file a complete and timely response to a requirement for information from the USPTO to avoid abandonment, indicating whether the applicant wishes to (1) proceed with examination, (2) delay examination for 12 months, or (3) expressly abandon the application. The initial response period is two months, extendable to a maximum total period of six months.

The U.S. Patent & Trademark Office (USPTO) may soon reach into its queue of unexamined national stage applications and ask you a pointed question: Do you actually want this application examined?

The USPTO has implemented the PCT Informed Examination Request (PIER) Pilot Program to assess how requesting examination of a U.S. national stage application in view of Patent Cooperation Treaty (PCT) international phase work products impacts application inventory and examination efficiency. From April 9, 2026 through April 9, 2027, the USPTO will select certain unexamined 35 U.S.C. §371 national stage applications that have completed pre-examination processing for participation in the program. Applications filed under 35 U.S.C. §111(a), including original nonprovisional utility applications, bypass continuation applications, plant applications, design applications, and reissue applications are not eligible.

The USPTO will have sole discretion on which applications are selected for the program, without any option for voluntary participation, abstention, or withdrawal from the program.

The USPTO may extend the program beyond its initial 12-month period if it determines that additional data is needed and may also terminate the program early.

How It Works

When an application is selected, the USPTO will issue a requirement for information (RFI) under 37 CFR §1.105. The RFI will reference PCT international phase work products in the application file, e.g., International Search Report (ISR), Written Opinion (WO), and International Preliminary Report on Patentability (IPRP). It will require the applicant to submit a response using USPTO Form PTO/SB/478 indicating whether, based on review of the international phase work products, they opt to:

• Proceed with examination. The application will be placed on an examiner's docket. The applicant may also file a preliminary amendment to place the application in better condition for examination when requesting examination, with or without a 12-month delay.
• Delay examination for 12 months. The USPTO will issue a notice to the applicant once the request has been approved. The application will be placed on an examiner’s docket after expiration of the 12-month period from the date of receipt of the request to delay examination. The 12-month delay period cannot be terminated early. Unlike a request for suspension or deferral of examination under 37 CFR §1.103, no processing fee is required to delay examination under the PIER Pilot Program.
• Expressly abandon the application. The applicant may opt not to proceed. A refund of the search and excess claim fees is not available when abandoning an application in response to the RFI. Importantly, the patent practitioner of record or the applicant (provided the applicant is not a juristic entity) must sign the form if express abandonment is selected, unless a continuation application is being filed, in which case a registered practitioner acting in a representative capacity may sign.

The RFI will set an initial two-month period for reply, extendable for an additional four months for a maximum total period of six months. Failure to file a timely, complete, and properly signed PTO/SB/478 form will result in abandonment of the application. If the USPTO considers an incomplete or improperly signed PTO/SB/478 to be a bona fide attempt to advance the application, it may issue a notice of deficiency setting a two-month period to correct the response, with extensions permissible up to a maximum six-month total period for reply.

Considerations

The PCT claims examined during the international phase may no longer align with the applicant’s preferred embodiment. A preliminary amendment may be warranted to align the claims with the applicant’s interests and place the application in better condition for examination.

Applicants should carefully consider the patent term adjustment (PTA) implications of actions taken in the PIER Pilot Program. The mailing date of the RFI will be used to determine whether the USPTO satisfied its obligation to issue an initial action within 14 months of the application’s filing date under 35 U.S.C. §154(b)(1)(A)(I), which may reduce or eliminate any “A” delay that would otherwise accrue. Any period of time exceeding three months from the mailing date of the RFI for filing a response will count as applicant delay. Additionally, if delayed examination is selected, the entire 12-month delay period will count as applicant delay.

The express abandonment option should be weighed carefully. Before signing a PTO/SB/478 form selecting express abandonment, the patent practitioner must take every precaution to confirm that abandonment aligns with the applicant’s wishes and best interests, particularly when no continuation application is being filed. Deliberate selection of the express abandonment checkbox on PTO/SB/478 form will block a later petition to revive the application on the basis of unintentional delay.

Takeaways

The PIER Pilot Program represents a significant shift in how the USPTO manages its national stage application inventory. Here are key points for practitioners and applicants to keep in mind.

To have all options in the PIER Pilot Program immediately available upon receipt of the RFI, patent practitioners should obtain Power of Attorney for U.S. national stage applications promptly after filing.

Applicants who wish to proceed with examination should also promptly file the initial Information Disclosure Statement (IDS). Although the RFI is not considered a first action on the merits, the PTO/SB/478 form indicating a request to proceed with examination will place the application on an Examiner’s docket. The initial IDS should be filed at least a month before the first action on the merits (e.g., Restriction Requirement, Non-Final Office Action, Notice of Allowance) to avoid potential applicant delay. Notably, references cited in the PCT international phase will not be printed on the cover of the resulting patent unless they are listed in an IDS.

When express abandonment is the selected course of action, filing a separate petition for express abandonment under 37 CFR §1.138 is recommended to facilitate processing. In the case where the applicant wishes to avoid publication of the application, a separate petition under 37 CFR §1.138(c) must be filed, generally at least four weeks before the projected publication date.

If a registered practitioner acting in a representative capacity is signing a PTO/SB/478 form selecting express abandonment and concurrently filing a continuation application, a separate letter indicating that the application is expressly abandoned in favor of the continuing application should also be filed (e.g., Form PTO/AIA/24).

Additional information about the PIER Pilot Program may be found in the Federal Register.

For more information, please contact Eileen S. Sun at esun@foxrothschild.com or another member of Fox Rothschild's Patent Practice Group.

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