USPTO Launches Streamlined Claim Set Pilot Program to Expedite Patent Examination

The U.S. Patent and Trademark Office (USPTO) published a Federal Register Notice today launching the Streamlined Claim Set Pilot Program, an initiative designed to expedite patent examination by assessing how a limited number of claims affects pendency and examination quality.

The USPTO stated that it “anticipates that focusing examination resources on already-filed, unexamined applications that have a streamlined claim set will enhance efforts to reduce the USPTO’s inventory and pendency.” Applications accepted into the pilot program will be “advanced out of turn (i.e., accorded special status) for examination until a first office action is issued.” After the first office action, the application will no longer be treated as special during examination.

Pilot Program Requirements

The pilot program is available for certain pending utility patent applications, but applicants must meet strict eligibility requirements.

To qualify, an applicant must file a timely petition to make special in an original non-reissue, noncontinuing, utility application filed under 35 U.S.C. § 111(a), provided the application has an actual filing date that was before the publication date of the Notice in the Federal Register. Moreover, national stage applications filed under 35 U.S.C. § 371 are not eligible to participate in the pilot program.

The most significant requirement relates to the claim set: applications must contain no more than one independent claim, no more than ten total claims, and no multiple dependent claims.

Furthermore, all claims other than the single independent claim must comply with a specific dependency format. The USPTO specified that a claim must be in proper dependent form under 35 U.S.C. § 112(d). The claim must refer to a previous claim, include every limitation of the previous claim referred to, and then specify a further limitation of the subject matter of the prior claim.

To comply with the dependency format for this pilot program, “the reference to the previous claim must appear in the preamble, and the claim must be directed to the same statutory class of invention as the independent claim.” An applicant may comply with these claim requirements by filing a preliminary amendment before or with the petition to make special under the pilot program.

The petition to make special must be filed with the petition fee under 37 CFR 1.17(h) before the issuance of a first office action, including a written restriction requirement. The USPTO will generally dismiss a petition if the application has already been docketed to a particular examiner in a Technology Center at the time the petition is taken up for decision.

Additionally, an applicant may file a petition to participate in the pilot program if “no inventor or joint inventor has been named as the inventor or a joint inventor on more than three other nonprovisional patent applications in which a petition to make special under this pilot program has been filed.”

Other Requirements:

• The petition must be submitted using Form PTO/SB/472, titled “CERTIFICATION AND PETITION TO MAKE SPECIAL UNDER THE STREAMLINED CLAIM SET PILOT PROGRAM;”
• The petition must be filed electronically using the USPTO’s Patent Center;
• The application must have been filed using the USPTO patent electronic filing system (currently Patent Center);
• The specification, claim(s), and abstract must comply with the USPTO requirements for submission in DOCX format at the time the application was filed; and
• If there is a nonpublication request in the application, the applicant must file a rescission of the nonpublication request no later than the time the petition to make special is filed.

Duration and Termination

The pilot program will accept petitions until either 12 months from Monday, October 27, or until each Technology Center has docketed at least approximately 200 applications accepted into the pilot program, whichever occurs first.

According to the program notice, significant disparities in participation across Technology Centers, “such as when the pilot program applications accepted in a Technology Center significantly exceeds 200,” may trigger early termination. If the pilot program is terminated, the USPTO will provide public notice.

To ensure transparency, the USPTO will publish on its website the total number of petitions filed and applications accepted into the pilot program for each Technology Center.