The USPTO will select certain unexamined national stage applications for the PIER Pilot Program intermittently until the close of the program. Applications selected for the program must be an international application that entered the national stage under 35 U.S.C. 371. Applications filed under 35 U.S.C. 111(a) including plant applications, design applications, and reissue applications will not be selected. Further, the USPTO will not select international design applications filed under the Hague Agreement in which the Office has received a copy of the international registration pursuant to Hague Agreement Article 10.

The USPTO will select applications for the program across high pendency technology areas based on the age of the application. At the outset, the USPTO plans to select a subset of applications that are expected to be docketed to an examiner for substantive examination within 5-6 months. The selection will favor applications in which the international phase work products cite at least one reference with an X or Y relevancy classification.

Applications entered into the program are at the sole discretion of the USPTO. The USPTO will not grant any petition to participate, abstain, or be removed from the program.

If the USPTO selects your application, the USPTO will issue a requirement for information under 37 CFR 1.105.

NOTE: Although the notice will be considered an Office action under 35 U.S.C. 132, it is not a first action on the merits.

The notice will require the applicant to indicate whether they opt to:

1. proceed with examination (with or without amendment)
2. delay examination for 12 months from the date of receipt of the request to delay examination, or 
3. expressly abandon the application in accordance with 37 CFR 1.138.

If you request to proceed with examination, the application will progress towards examiner docketing. If you request delay of examination, the application will be placed on an examiner’s docket after the expiration of a 12-month delay period. Once a request to delay examination under the program has been approved, you will not be permitted to terminate the delay period early. The application will be docketed for examination after the expiration of 12 months from the date of receipt of the request. For more information about delaying examination under the PIER Pilot Program, visit the Federal Register Notice.

If the applicant does not submit a complete and timely reply using USPTO form PTO/SB/478, the application will be abandoned. Visit the Supplementary Information in the Federal Register Notice for more information about application abandonment.

If you choose to respond to a requirement for information, you must use form PTO/SB/478. If you're filing the PTO/SB/478 electronically in Patent Center, you must use the document description provided on the form. This is to ensure that the appropriate area of the USPTO is promptly notified of the reply.  Visit the Federal Register Notice for more information on how to respond to a requirement for information.

In order for your reply to be considered complete, the PTO/SB/478 must be properly signed and only one of the provided checkboxes must be selected.

If the form is incomplete or improperly signed, it will be handled in substantially the same manner as an amendment not fully responsive to a non-final Office action. See MPEP 704.12(c) and MPEP 714.03. If your reply is a bona fide attempt to advance action on the application, you will be notified of the deficiency and may be given a shortened statutory period of two months to provide a fully responsive reply. Extensions of this time period set by the notice of nonresponsive reply will be permitted under 37 CFR 1.136(a), but in no way can any extension carry the date for reply to this notice beyond the maximum period of six months set by statute (35 U.S.C. 133).

Any further nonresponsive reply typically will not be treated as bona fide and, therefore, the time period set in the prior notice will continue to run. Visit the Federal Register Notice for more information on our internal process.

When you submit a complete reply to the requirement for information, you may elect to either proceed with examination or delay examination for 12 months. This means that if you desire to prosecute the application you will have greater control on when your application will be examined.

Participation will also promote review of applications to encourage submission of a preliminary amendment to place the application in better condition for examination. In this way, the pilot tests a mechanism to improve the efficiency of examination.