Panitch Schwarze | USPTO Introduces Streamlined Claim Set Pilot Program to Accelerate Patent Examination

The United States Patent and Trademark Office (USPTO) has announced the launch of its Streamlined Claim Set Pilot Program, a new initiative aimed at evaluating how limiting the number of claims in a patent application impacts examination efficiency and quality.

Ordinarily, new patent applications are examined in the order of their U.S. filing date or national stage entry date. Under this pilot program, however, Applicants with pending, original, noncontinuing utility applications may be eligible for special status—that is, examination out of turn—if their applications meet the following claim limitations: (i) only one independent claim; (ii) no more than ten total claims; and (iii) no multiple dependent claims. Applicants may bring their applications into compliance with the pilot program requirements by filing a preliminary amendment.

Applications claiming priority to provisional or foreign filings are eligible to participate, while those claiming the benefit of U.S. nonprovisional or international applications are not. To apply, Applicants must file a petition to make special under the pilot program before the issuance of a first Office Action. The USPTO has emphasized, however, that petitions filed for applications already docketed to an examiner will generally be dismissed, even if a first Office Action has not yet been mailed. Additionally, no inventor named on the application may have been named as an inventor on more than three prior petitions under this program.

Applications accepted into the pilot will be advanced for examination until the first Office action is issued, after which they will revert to the examiner’s regular docket. At this stage, the USPTO anticipates that each Technology Center will accept approximately 200 applications into this pilot program.

By participating, Applicants gain an accelerated first Office action and earlier examiner feedback. Such insights can help shape broader patent family strategy but at the cost of some claim breadth. The Streamlined Claim Set Pilot Program is ultimately a strategic decision, one that calls for careful evaluation of the balance between claim scope, flexibility and downstream prosecution, in light of the invention and portfolio objectives.

Compliments of Panitch Schwarze – a member of the EACCNY