USPTO pilot targets PCT backlog
The United States Patent and Trademark Office launched a new initiative aimed at reducing the agency’s growing application backlog. Effective April 9, the PIER Pilot Program targets examination pendency by introducing a mandatory new decision point for certain U.S. national stage applications filed under 35 U.S.C. § 371. Unlike most USPTO pilot programs, participation in PIER is not voluntary. The agency selects applications at its discretion, and applicants cannot opt in or opt out.
For selected applications, the USPTO will issue a Requirement for Information (RFI) under 37 CFR § 1.105. This request references PCT international phase work products already present in the national stage file. These documents include the International Search Report (ISR), the Written Opinion of the International Searching Authority (WO/ISA), and, where applicable, the International Preliminary Report on Patentability (IPRP).
The USPTO has provided limited detail regarding how applications will be selected. However, the office indicated that applications in high-pendency technology areas and those with PCT International Search Reports citing at least one X or Y reference are more likely to be chosen. Only national stage applications that have completed pre-examination processing are eligible for the program. The requirements for signing are strict specific to who signs it.
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Mandatory Response Options
Applicants must respond using Form PTO/SB/478. On the form, applicants or patent practitioners simply check one of three boxes corresponding to the available options, provide basic patent application details, and sign and date where required. The first option is to proceed with examination. This places the application on an examiner’s docket immediately. Applicants may also file a preliminary amendment to place the application in better condition for examination.
The second option allows the applicant to delay examination for 12 months. Once approved, this delay cannot be terminated early. The application will be docketed for examination only after the 12-month period expires. The third option is to expressly abandon the application. This choice is for applicants who elect to abandon in view of the international phase work products.
The RFI sets a two-month response period. This period is extendable to a maximum of six months under 37 CFR § 1.136(a). Failure to file a timely, complete, and properly signed Form PTO/SB/478 will result in automatic abandonment of the application. Because the deadline runs from the RFI mailing date, firms should ensure robust docketing procedures are in place for § 371 applications.
Patent Term Implications
The PIER RFI is expressly designated as an Office action under 35 U.S.C. § 132. While it is not a first action on the merits, this designation carries significant consequences for Patent Term Adjustment (PTA). The RFI stops the USPTO’s 14-month PTA clock. Normally, if the USPTO fails to issue a first action within 14 months of national stage commencement, the application accrues “A-delay” PTA on a day-for-day basis. The PIER RFI satisfies this obligation, potentially reducing or eliminating PTA that would otherwise accrue.
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Electing the 12-month delay counts as applicant delay. The entire delay period—beginning on the date of receipt of the reply requesting delay and ending one year later—is treated as “applicant delay” under the PTA rules. This counts against any PTA the application may accrue. For high-value applications, particularly in the pharmaceutical and biotechnology sectors where patent term closely correlates with commercial value, these implications may significantly influence the response strategy.
This approach differs from standard backlog tactics where agencies might simply hire more examiners or raise fees. Instead, the program leverages existing international search data to filter the docket earlier, forcing applicants to make a strategic choice based on work products from the international phase rather than waiting for a full US examination.
Applicants who elect to abandon under the program will not be entitled to a refund of search and examination fees already paid. Because the RFI qualifies as an action under 35 U.S.C. § 132, it forecloses refund eligibility under 37 CFR § 1.138(d).
