Automating the Patent Process at the USPTO to Save Inventors Money

Have you ever drafted a claim set with a second claim that began, “the system of claim 2, wherein…” when you meant to write “the system of claim 1”? It’s embarrassing because every first-year patent attorney knows that a dependent patent claim cannot depend on itself. However, making the error is inevitable when you draft a large number of patent applications. The good news is, if you upload such a claim to today’s Patent Center (where patent applications are filed), you will be provided with the following alert: “The claims appear to contain an improper dependency with at least one claim that depends on a missing or canceled claim. Please review and revise if necessary”. How beautiful is this? Now you can self-correct before your patent application is even filed. Ten years ago, you would have to go back and forth with a patent examiner to correct the error.

The Automatic IDS Option:

When it comes to automation at the U.S. Patent and Trademark Office (USPTO), another area where inventors can save money is with respect to Information Disclosure Statements (IDSs). IDSs are filed with the USPTO so inventors can fulfill their duty under 37 CFR 1.56(a) to disclose information that is material to the patentability of their inventions. They are great mechanisms – we want inventors and their representatives to exhibit candor and good faith toward the Office. However, they are currently a source of waste in the patent system.

In January of 2025, the USPTO significantly increased fees associated with Information Disclosure Statements (IDSs), instituting a surcharge of $200 per IDS for having 51-100 references, $500 for 101-200 references, and $800 for more than 200 references. These fees and the attorney fees associated with them largely do not need to be passed on to inventors at all, particularly considering the high continuing application fees inventors are now paying in many cases.

When continuing patent applications are filed, IDSs typically include prior art from parent patent applications. And when inventors learn of prior art in an Office Action, they often have to disclose it in all patent applications that are part of the same family. During this time, the USPTO is constantly collecting massive amounts of prior art data from both inventors and patent examiners.

This means there is no good reason why inventors have to pay patent attorneys and paralegals to file large numbers of IDSs, let alone pay surcharges for having too many references. Forcing them to reproduce this data again and again is a drain on their budgets because the USPTO already has the information. Now of course, attorney and USPTO fees associated with IDSs cannot be avoided for all patent applications, but for continuing patent applications, this is exactly what needs to happen.

The solution is simple – the USPTO must adopt an automatic IDS option in which they take the data they already have and ask inventors if they want that data to be shared across different patent applications. The automatic IDS option could be provided as a toggle button, appearing in the Patent Center with a caption that says, “Include Prior Art from Priority Application as IDS?” And when an Office Action issues that cites new prior art, a similar toggle button could appear in the Patent Center that says, “Include Prior Art from Office Action in Co-Pending Case X?”

The automatic IDS option could save applicants $400–$1,400 per continuing application by eliminating both attorney/paralegal time (roughly $200–$600 per IDS) and the new USPTO surcharges ($200–$800 when more than 50 references are cited). These savings would apply to both original and supplemental IDSs. If 150,000 continuing applications are filed each year (best guess), the aggregate benefit to inventors would be substantial.

The Automatic Prior Art Search and Patent Eligibility Options

Additionally, the direction technology is heading also suggests that novelty and patent eligibility determinations may be more automated in the future. For instance, in October 2025 the USPTO announced an Artificial Intelligence Search Automated Pilot Program in which petitions could be filed by applicants to allow an internal AI tool to run pre-examination prior art searches on original non-continuing utility applications, delivering an “Automated Search Results Notice” of up to 10 ranked references before full examination. This is a great move by the USPTO, and it shows the direction they are heading. Once this Pilot is expanded and developed enough, an alert could appear in the Patent Center when a patent application is uploaded, but before it is submitted, which indicates that relevant prior art references were uncovered by USPTO searching software (without sharing invention data). This would prevent claims from being filed when glaring prior art is readily found by USPTO search tools.

When it comes to patent eligibility, the tool the USPTO really needs is a machine learning model trained to identify patent ineligibility. We will always need a human to make final determinations, but from an inventor’s standpoint, having claims filtered by a USPTO model trained on patent ineligibility would mean fewer times going back and forth with patent examiners before receiving a notice of allowance. In this case, a similar alert could appear in the Patent Center indicating that a machine learning model has detected that a patent application may be at high risk of patent eligibility rejections for certain reasons (without sharing invention data).

The automatic prior art search and patent eligibility options are also timely. The USPTO has reduced its backlog of unexamined patent applications to approximately 777,000. This is the lowest level in two years, which means first Office Action pendency now averages 16–22 months. Pre-filing alerts in the Patent Center would empower applicants and their attorneys to self-correct issues early, further reducing the backlog and helping new inventions reach the market faster.

In all cases, the alerts must be optional – sometimes the USPTO is wrong, even if their tools say otherwise. On the other hand, in the vast majority of cases, the USPTO can reliably filter patent applications to determine whether a novelty or patent eligibility rejection should be made in the first place. Screening for novelty and patent eligibility issues is no different than screening for proper claim dependency, particularly when inventors have the option of ignoring any alerts that might appear.

Automation to Save Inventors Money

Automation should not govern our lives, but as a tool – like a calculator – it can help us to move further ahead. The USPTO has a real opportunity here to reduce costs for inventors, improve efficiency, and demonstrate that automation can serve both the Office and the inventor community. The data and technology already exist. What remains is a decision to build these applicant-facing features into the Patent Center.

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Author: Funtap