Notice | USPTO officially launches PIER pilot: PCT must choose one of three to enter the US national phase, failure to respond will be considered abandonment!
On April 9th, the United States Patent and Trademark Office (USPTO) issued a notice in the Federal Register officially implementing the PCT Informed Examination Request (PIER) pilot project, which will last for one year until April 9th, 2027. This is an important pilot project launched by USPTO in recent years for the PCT national phase examination process, which may become a barometer for future policy directions and deserves the attention of global innovation entities on its potential impact on the operational habits and risk management of US patent layout.
This project means that some PCT international applications will no longer automatically enter the substantive examination queue after entering the US national phase. Applicants must actively confirm whether to proceed with the examination after receiving notification from USPTO. Failure to respond within the deadline will be considered as abandonment.
The PIER (PCT Informed Examination Request) pilot program, also known as the PCT Informed Examination Request pilot project, aims to reduce application backlog, shorten examination cycles, and improve examination efficiency and quality by requiring applicants to proactively clarify their examination intentions based on existing examination results in the PCT international phase.
The USPTO has stated in its official announcement that the pilot program will evaluate the actual impact of “requiring applicants to refer to international stage work products for examination requests” on case inventory and examination efficiency, fully utilizing achievements such as international search reports (ISR), written opinions (WO), and international preliminary examination reports (IPR) to promote rational decision-making by applicants and avoid low value applications occupying limited examination resources.
2、 Scope of PIER pilot application and selection rules
1. Applicable to: Only applicable to applications that have entered the US national phase through 35 USC § 371, i.e. PCT international applications that have passed formal examination but have not yet entered substantive examination.
2. Clearly exclude situations:
US patent applications submitted to USPTO and processed in accordance with 35 USC § 111 (a), including divisional applications, continuation applications, and partial continuation applications.
Design patents, plant patents, reissued patents
PCT national phase applications that have entered the substantive examination stage
3. Selection method:
USPTO unilaterally conducts random screening, and applicants do not have the right to voluntarily participate, withdraw, or exclude. Whether they are selected or not is entirely decided by the authorities to ensure the objectivity and neutrality of the pilot sample.
For applications included in the pilot program, USPTO will issue a Requirement for Information, which will refer to the relevant work results formed during the PCT international phase of the application, such as the International Search Report (ISR), Written Opinion (WO), or International Preliminary Patent Report (IPRP). The applicant must provide a formal response within the prescribed deadline, otherwise the application will be considered abandoned.
PIER Pilot Core Process and Time Requirements
1. Official Notice: For the selected application, USPTO will issue a Request for Information (RFI) in accordance with 37 CFR 1.105, which is a statutory official notice with strict legal effect.
2. Response time limit: The usual response time limit is two months, and the longest period allowed by law shall not exceed six months. If a complete and signed compliant response document is not submitted within the deadline, the application will be deemed abandoned.
3. Response requirements: The response must be submitted using the USPTO official designated form PTO/SB/478. Self made documents, emails, or other informal materials are not accepted. The form must be fully filled out and signed in compliance.
Three mandatory paths for applicants (officially specified)
According to the official announcement of USPTO and relevant regulations of the Federal Register, after receiving a Request for Information (RFI) issued in accordance with 37 CFR 1.105, the applicant must make a clear choice from one of the following three legal paths, without vague expression or multiple choices. The decision must be based on the examination results of the PCT international stage, such as the International Search Report (ISR), Written Opinion (WO), International Preliminary Examination Report (IPR), etc., and carefully evaluate the patentability and commercial value of the application before determining:
1. Proceed with Examination
The applicant clearly chooses to initiate the substantive examination procedure of the PCT US national phase involved in the case, and can submit preliminary amendments simultaneously to optimize and improve the claims, specification, and other contents in the application documents, fill in potential defects, clarify the scope of protection, and thereby improve the examination pass rate and authorization efficiency.
This path is applicable to cases where the technical solution is mature and stable, has been confirmed to be novel and creative through international stage examination, has clear commercial value, and the applicant has an urgent need to obtain US patent rights for market layout, infringement rights protection, and technical barrier construction.
2. Delay Examination
The applicant may apply to postpone the substantive examination procedure for 12 months, which is mainly used for the applicant to further conduct commercial value assessment, improve technical solutions, adjust global patent layout strategies, and make sufficient preparations for subsequent examination and operation after authorization.
Important notice: The 12-month examination delay period is not included in the compensation scope of PTA (Patent Term Adjustment) and belongs to the examination delay initiated by the applicant. USPTO does not provide patent protection period extension compensation for this period, and the patent protection period will still be calculated normally from the original application date.
3. Expressly Abandon the Application
The applicant clearly expresses the intention to terminate the PCT US national phase application and voluntarily waives the subsequent examination procedures and the right to obtain patent rights; According to the relevant regulations of USPTO, if the applicant fails to submit a compliance response within the statutory response period, their application in question will be deemed to have been automatically abandoned, with the same legal effect as voluntary abandonment.
This path is applicable to cases where the PCT international stage search and examination confirm that the application lacks patent elements such as novelty and creativity, or that the technical solution has insurmountable defects, or that the commercial value is extremely low. Continuing to invest in examination fees, agency fees, and subsequent maintenance fees has no practical significance and requires timely loss of losses.
The launch of the PIER pilot by USPTO is aimed at forcing applicants to evaluate and actively screen in advance, allowing truly valuable innovations to receive faster review and achieving optimized allocation of review resources.
The Potential Impact and Suggestions of PIER Pilot on Chinese Enterprises
1、 Possible impacts
The complexity of the program increases. The traditional mode is passive queuing, and the PIER pilot introduces active decision-making nodes. Enterprises need to respond to RFI in a timely manner to avoid delays being considered as giving up.
Time cost and expense considerations. Delay in response requires payment of official fees. Although the 12-month delay period provides a decision-making buffer, it is fully included in the PTA applicant’s delay and may affect patent term adjustments.
Improved strategic flexibility. For applications whose commercial value has not been clearly defined, a delay period can be used for prudent evaluation. Giving up voluntarily can save subsequent examination fees, but the paid search fees and excess claims fees will not be refunded.
2、 Other precautions
Failure to respond to RFI within the deadline will result in the application being deemed abandoned and may be remedied through recovery procedures, but does not apply to voluntary abandonment. Once a 12-month delay is selected, early termination is not allowed. The delay period will be fully included in the applicant’s delay, which may reduce the number of days for patent term adjustment. The PIER pilot program currently lasts for one year, and USPTO will evaluate whether to extend or adjust it based on the implementation effect. It is recommended to pay attention to the official announcement of USPTO and adjust the US patent layout strategy in a timely manner.
summary
The PIER pilot launched by USPTO can be seen as an attempt to explore the transition from “passive queuing” to “active decision-making” in the US PCT national phase examination. Its core direction is to efficiently allocate limited examination resources to high-value patent innovation. For Chinese enterprises, this may bring new challenges in the process, or provide reference opportunities for optimizing patent layout and improving patent quality. It is recommended that enterprises pay attention to the pilot rules of USPTO, conduct pre application value assessment as appropriate, and standardize the completion of various operations, in order to better cope with the patent layout environment in the US market and maintain their own innovation achievements.
Official document of the Federal Register:
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