Written by Patent Consultant Maria Laini
The USPTO is making some important changes to reduce application backlogs, and these changes will require some action from some selected applicants who have got a US application through the international route.
The PIER Pilot Program
This month, the USPTO launched the PIER Pilot Program (1), which applies to a number of selected US applications which were filed through the international route (i.e., under the PCT).
If your application is selected for the program, you will receive in the incoming months an invitation to fill up a form called “SB/478” (2).
More specifically, you will be presented with three options, and you will need to select (only) one of them. If you do not respond within two months from the invitation (which can be extended to a total of four months), the application will be abandoned.
The three options are the following:
- proceed with the examination of the application,
- request delay of examination of the application for a period of 12 months from the date of receipt of the request to delay (i.e., the response to the invitation),
- expressly abandon the application.
By selecting option 1, the application will be assigned to an examiner, and examination will start as soon as possible.
By selecting option 2, you will delay prosecution by one year, which can be useful, for example, to delay costs. However, be aware that there is no coming back from this decision, once it’s taken.
Furthermore, this choice comes at the cost that, upon grant of a US patent, there is a calculation of extra days to add to the patent’s lifetime (the so called “patent term adjustment”, or more briefly PTA), and that a delay of 12 months under this program will result in a reduction of the PTA (i.e., a shorter patent lifetime overall).
It is also noted that, if either option 1 or 2 is chosen, it is possible to file preliminary amendments before examination starts.
Finally, it is noted that, if the application is abandoned under option 3, there will be no refund of the search and/or examination fees paid at the USPTO.
Why the PIER Pilot Program? And what is next?
The PIER Pilot Program is created to increase efficiency and reduce applications’ backlogs, by ensuring that examination is streamlined accordingly to the real wishes of applicants.
The possibility to choose amongst the three options described above allows the USPTO to know which applications should be prioritised, which ones can be delayed, and which ones should not be looked at in the first place.
However, it is important that applicants know about the program and the important consequences of ignoring the invitation from the USPTO to choose the next prosecution’s step.
If the program is successful, this may mean that applicants in the US will experience faster and more prompt examination of their applications.
How are applications selected, and will the program be expanded?
At the moment, the USPTO decides which applications are selected for the program, and it is not possible for the applicant to request entry. Moreover, once the USPTO decides that an application is selected, it is not possible for the applicant to refuse and/or to change their mind on the selected option in response to the USPTO’s invitation.
The program may be extended, if successful, but it is still not clear if this will happen or not.
Conclusion
If your application is with us and is selected for the PIER Pilot Program, we will notify you and go through the various options with you. If you do not have an application with us but would like to know more, please feel free to get in touch.
References
2) https://www.uspto.gov/patents/apply/forms
