Streamlined Claim Set Pilot Program

<NOTICE> DEPARTMENT OF COMMERCE <SUBAGY>Patent and Trademark Office</SUBAGY> <DEPDOC>[Docket No.: PTO-P-2025-0182]</DEPDOC> <SUBJECT>Streamlined Claim Set Pilot Program</SUBJECT> <HD SOURCE="HED">AGENCY:</HD> United States Patent and Trademark Office, Department of Commerce. <HD SOURCE="HED">ACTION:</HD> Notice. <SUM> <HD SOURCE="HED">SUMMARY:</HD> The United States Patent and Trademark Office (USPTO) is implementing the Streamlined Claim Set Pilot Program to evaluate how having a limited number of claims under examination impacts pendency and examination quality. Under the pilot program, certain pending utility patent applications that have no more than one independent claim and no more than ten total claims may be eligible for expedited examination, if the requirements specified in this notice are met. An applicant may comply with the claim requirements of the pilot program by filing a preliminary amendment before or with a petition to make special under the pilot program. Applications accepted into the pilot program will be advanced out of turn ( <E T="03">i.e.,</E> accorded special status) for examination until a first Office action is issued. This notice sets forth the requirements of the pilot program and describes how the pilot program will be administered. The USPTO 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, and that the data gathered from this pilot program will support designing future efforts to expedite patent examination. </SUM> <DATES> <HD SOURCE="HED">DATES:</HD> <E T="03">Pilot Duration:</E> The Streamlined Claim Set Pilot Program will accept petitions to make special beginning October 27, 2025, until either October 27, 2026 or the date each Technology Center that examines utility applications has been docketed at least approximately 200 applications accepted into the pilot program, whichever occurs first. The USPTO recognizes that participation in the pilot program across Technology Centers may vary. Disparities in participation across Technology Centers, such as when the pilot program applications accepted in a Technology Center significantly exceeds 200, may result in early termination of the pilot program. The USPTO may, at its sole discretion, terminate the pilot program for any reason, including factors such as workload and resources needed to administer the program, feedback from the public, and the effectiveness of the program. If the pilot program is terminated, the USPTO will notify the public. The USPTO, on its website, will specify the number of petitions filed and the number of applications accepted into the pilot program for each Technology Center. A petition filed under the pilot program before the termination of the program will be considered on its merits. </DATES> <FURINF> <HD SOURCE="HED">FOR FURTHER INFORMATION CONTACT:</HD> Nicholas Hill, Legal Advisor, Office of Patent Legal Administration, Office of the Deputy Commissioner for Patents, at <E T="03">Nicholas.Hill@uspto.gov;</E> or Kristie A. Mahone, Senior Legal Advisor, Office of Patent Legal Administration, Office of the Deputy Commissioner for Patents, at <E T="03">Kristie.Mahone@uspto.gov.</E> For questions on electronic filing, please contact the Electronic Business Center at 866-217-9197 or <E T="03">ebc@uspto.gov</E> . For questions relating to a particular petition, please contact the Office of Petitions at 571-272-3282. </FURINF> <SUPLINF> <HD SOURCE="HED">SUPPLEMENTARY INFORMATION:</HD> New patent applications ordinarily are taken up for examination in the order of their U.S. filing date or national stage entry date. <E T="03">See</E> sections 708 and 1893.03(b) of the Manual of Patent Examining Procedure (MPEP) (9th Edition, Rev. 01.2024, November 2024). The USPTO has procedures to advance out of turn (accord special status) the examination of a utility application, provided that the applicant files (1) a petition to make special, or (2) a request for prioritized examination. <E T="03">See</E> 37 CFR 1.102 and <E T="03">Discontinuation of the Accelerated Examination Program for Utility Applications,</E> 90 FR 24324 (June 10, 2025) (final rule). To qualify for the Streamlined Claim Set Pilot Program, an applicant must file a timely petition to make special under the pilot program in an original (non-reissue), <SU>1</SU> <FTREF/> noncontinuing, utility application filed under 35 U.S.C. 111(a) before October 27, 2025. National stage applications filed under 35 U.S.C. 371 are not eligible for participation in the pilot program. The petition to make special under the pilot program 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. An applicant should not file a petition to make special under the pilot program in an application that is already docketed to an examiner. The USPTO will generally dismiss a petition under the pilot program 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. <FTNT> <SU>1</SU>   <E T="03">See</E> section 201.02 of the MPEP (“ `Original' application is used in the patent statutes and rules to refer to an application which is not a reissue application.”). </FTNT> To be eligible for the pilot program, an application must have no more than one independent claim, no more than ten total claims, no multiple dependent claims, and all claims other than the independent claim must comply with the dependency format specified in this notice. An applicant may comply with the claim requirements of the pilot program by filing a preliminary amendment before or with the petition to make special. The entry of such a preliminary amendment will not, however, be contingent upon the grant of the petition to make special. An applicant must also certify that no inventor or joint inventor has been named as the inventor or a joint inventor on more than three other nonprovisional applications in which a petition to make special under this program has been filed. Applications accepted into the program will be advanced out of turn ( <E T="03">i.e.,</E> accorded special status) for a first Office action. After the first Office action, the application will no longer be treated as special during examination. <HD SOURCE="HD1">Definition</HD> <E T="03">Noncontinuing application:</E> A noncontinuing application is an application that is not a continuation, divisional, or continuation-in-part application filed under the conditions specified in 35 U.S.C. 120, 121, 365(c), or 386(c) and 37 CFR 1.78. <E T="03">See</E> section 201.02 of the MPEP. Any application that claims the benefit of the filing date of a prior-filed application that is a nonprovisional U.S. application and/or international application designating the United States is not eligible for participation in the pilot program. Claiming the benefit under 35 U.S.C. 119(e) of one or more prior provisional applications or claiming a right of priority under 35 U.S.C. 119(a)-(d) or (f) to one or more foreign applications will not affect eligibility for the program. <HD SOURCE="HD1">Part I. Requirements To Participate</HD> The petition to make special must be properly signed and accompanied by the fee set forth in 37 CFR 1.17(h), as required by 37 CFR 1.102(d). The patent application and the petition must meet the following requirements. <HD SOURCE="HD2">(1) Types of Applications and Time for Filing Petition</HD> The pilot program is available for original, noncontinuing, utility applications filed under 35 U.S.C. 111(a). The application must have an actual filing date that is before October 27, 2025. The petition to make special under the pilot program must be filed before the issuance of a first Office action, including a written restriction requirement. Because preparing a first Office action may begin soon after an application is docketed to an examiner, the USPTO will, as stated above, generally dismiss a petition under the pilot program 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. <HD SOURCE="HD2">(2) The USPTO Form Required for Filing Petition</HD> Form PTO/SB/472, titled “CERTIFICATION AND PETITION TO MAKE SPECIAL UNDER THE STREAMLINED CLAIM SET PILOT PROGRAM,” must be used to submit the petition under the pilot program (available at <E T="03">www.uspto.gov/PatentForms</E> ). Form PTO/SB/472 contains the certification statements and agreement required for participation in the pilot program, and information about the required fee. Use of the form will enable the USPTO to quickly identify and timely process the petition. In addition, use of the form will help applicants understand and comply with the petition requirements of the pilot program. Under 5 CFR 1320.3(h), form PTO/SB/472 does not collect “information” within the meaning of the Paperwork Reduction Act of 1995. <HD SOURCE="HD2">(3) Claim Limit, No Multiple Dependent Claims, Dependency Format, and Agreement</HD> When the petition to make special is filed, the application must contain no more than one independent claim, no more than ten total claims, and no multiple dependent claims. All claims other than the single independent claim must comply with the dependency format specified below. For applications accepted into the pilot program, the examiner may refuse entry of any amendment that, if entered, would result in a set of pending claims with more than one independent claim, more than ten total claims, or a multiple dependent claim. The examiner may also refuse entry of any amendment that would result in a claim other than the independent claim ━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━ Preview showing 10k of 23k characters. Full document text is stored and available for version comparison. ━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━