Recently, the U.S. Patent and Trademark Office (USPTO) issued several notices regarding new pilot programs and procedures that can affect patent term. As you navigate uncharted waters, we hope this alert can be a map to help guide your patent prosecution strategy.
A. Navigating the PIER: USPTO PIER Pilot Program
Starting May 21, 2026, the USPTO will issue a requirement for information (RFI) under 37 CFR §1.105 for selected unexamined national stage patent applications. These applications will be identified in high-pendency technology areas, based on the age of the application. This RFI will be considered an office action under 35 U.S.C. §132. The applicant must respond to the notice by filing Form PTO/SB/478 within two months of the RFI (extendable for up to an additional four months with payment of increasing government fees).
On the form, the applicant must select one of three choices:
- continue with the U.S. national stage processing,
- request a delay in prosecution for up to 12 months, or
- expressly abandon the application.
Failure to respond to the RFI will result in abandonment of the application. The applicant can also file a preliminary amendment to amend the claims along with Form PTO/SB478 if they so choose, in order to place the application in better condition for examination.
Below are some frequently asked questions regarding the PIER pilot program:
My application has entered national stage under 35 USC §371. Could I avoid receiving an RFI or simply not respond to the RFI?
Neither option is available. Application selection is at the sole discretion of the USPTO and there is no mechanism for applications to opt-out of the program. Further, if you receive an RFI for an application, lack of response to the RFI will result in abandonment of the application.
How do I know if my §371 application has cleared pre-examination processing?
If you are unsure on your application’s current status, contact your IP counsel or the IP prosecution team at Saul Ewing, and we can investigate whether your application has cleared pre-examination processing at the USPTO.
What does the RFI mean for patent term adjustment (PTA)?
If the USPTO issues an RFI for your application, the date of mailing of the RFI will be treated as the date that the USPTO satisfied a first-action obligation under 35 USC §154(b)(1)(A)(i), which can reduce patent term delay on the part of the Office.
In order to avoid accruing Applicant delay time, we strongly suggest providing instructions to respond to the RFI within the two-month response period.
If you elect the program’s 12-month examination delay, there may be a significant reduction in patent term adjustment. Please note that you will not be permitted to terminate the delay period early. As for patent adjustment calculation, the USPTO will treat that period as a failure to engage in “reasonable efforts to conclude prosecution” under 35 U.S.C. § 154(b)(2)(C)(i), (iii) and 37 CFR § 1.704(c). As a result, the entire 12-month deferral is charged as applicant delay and will be deducted from any PTA earned on the application.
Are Bypass Continuations under 35 USC §111(a) also subject to the PIER pilot program?
No. Plant, design, and nonprovisional applications filed under 35 USC §111(a) are not included in this pilot program.
What is the goal of the PIER pilot program?
The USPTO expects that requiring applicants to indicate how they plan to move forward in view of international phase search report and written opinion will contribute to efforts to increase quality and reduce inventory and pendency.
When is the PIER pilot program scheduled to end?
Currently, the program is scheduled to conclude on April 9, 2027. During or after the pilot program, the USPTO anticipates providing an avenue for participants to provide feedback regarding the PIER pilot program.
B. Reaching the Dock(et): Applicant Pre-Docketing Notice pilot program
Separate from the PIER pilot program, the USPTO will begin to send a notice to the applicant approximately three (3) months before the date when a nonprovisional application (including a plant, design, application filed under 35 USC §111(a), and application filed under 35 USC §371) is expected to be docketed to an examiner for substantive examination.
This notice will inform the applicant that examination will commence soon. The notice will remind the applicant to check inventorship and ownership, as well as proactive steps to expedite prosecution: filing a preliminary amendment, information disclosure statement, or other paperwork used for clarification or avoid foreseeable rejections (such as a declaration under 37 CFR §1.132).
Additionally, the notice will serve as a reminder to promptly pursue express abandonment for those who no longer wish to seek patent protection. Applicants who choose to abandon their applications can obtain a refund of the search fee and any excess claim fees paid in their application if the conditions in 37 CFR §1.138(d) are satisfied.
Notably, a response to the pre-docketing notice is not required and applications will proceed to examination in the normal course if no action is taken.
C. Abandon ship?: Show-cause orders issued by the USPTO for pending applications that would issue without patent term
The Court of Appeals for the Federal Circuit held that “provisional rights [under 35 U.S.C. §154(d)] are granted only when a patent would issue with exclusionary rights (i.e., would issue before its expiration date).” In re Forest, 134 F.4th 1198 (Fed. Cir. 2025) (emphasis added). The Court affirmed that an applicant lacks proper legal standing in a pending patent application if the patent issuing from such patent application would have no remaining statutory life (i.e., if the patent application is still pending when the 20-year patent term clock expires).
As a result of the precedential decision, the USPTO has begun identifying pending applications, which, when issued, would result in a patent without any patent term (and with no possibility of accruing patent term adjustment which would result in extended patent term) and mailing orders to show cause as to why prosecution of such pending applications should continue, even though any resulting patent would issue without exclusionary rights.
It is important to independently review patent term and compare your calculation of the patent term with the patent term calculated by the USPTO. To determine the best course of strategy with any pending application with the USPTO and discuss any potential discrepancies with patent term, please reach out to the Saul Ewing IP Prosecution team and we can further assist you.
We hope this alert can be a map to guide your patent applications through uncharted waters. If you have questions regarding these pilot programs or receive a show-cause order from the USPTO, please reach out to the authors of this alert or a member of the Saul Ewing Patent Practice or the Saul Ewing IP Practice.
