The United States Patent and Trademark Office (USPTO) recently introduced the PCT Informed Examination Request (PIER) Pilot Program effective on April 9, 2026, in which the USPTO will select certain national stage U.S. patent applications and require Applicants to provide information under Rule 105. The USPTO has stated that the information required will be regarding the international phase work product, such as the international search report and written opinion (ISR/WO) and international preliminary report on patentability (IPRP).
Applications selected for the program will require the Applicant to affirmatively indicate whether they want to: 1) proceed with examination and optionally file a preliminary amendment; 2) delay examination for 12 months from the date of receipt of the request for delay; or 3) expressly abandon the application. Applicants must respond in order to avoid abandonment of the application. The response period is 2 months and is extendable upon payment of extension fees.
In contrast to voluntary USPTO pilot programs, Applicants do not elect to participate in PIER (the USPTO will choose which applications to include) and Applicants cannot opt out of the program. Currently, limited information is provided regarding how the USPTO will select applications, although Deputy Commissioner for Patents, Charles Kim, recently described that Applicants in high pendency technical areas are more likely to be chosen.[1] Additionally, it also seems logical that the USPTO may select applications where the international search and written opinion expressed negative findings regarding patentability such that Applicants may choose to abandon the application or amend the claims, thereby reducing backlog.
While the pilot program does not appear to be particularly cumbersome on its face, one way to avoid potential inclusion in the pilot program and having to respond to the request for information is to file a U.S. nonprovisional application under 35 U.S.C. 111 rather than filing a U.S. national phase application under 35 U.S.C. 371. Applicants could file a U.S. application under 35 U.S.C. 111 and a PCT application on the same day to avoid potential inclusion in the pilot program while still benefiting from the international work product and having the option to file other national phase applications from the PCT application. However, under the USPTO’s own guidance, there is recognition of the potential burden to Applicants for requirements for information under Rule 105. See MPEP 704.10 and 704.11. Specifically, the USPTO acknowledges that “A requirement for information under 37 CFR 1.105 places a substantial burden on the applicant that is to be minimized by clearly focusing the reason for the requirement and the scope of the expected response. Thus, the scope of the requirement should be narrowly defined….” MPEP 704.11.
The response to a requirement under Rule 105 is broader than what is included under the duty of disclosure under Rule 1.56 which requires disclosure to the USPTO information material to the patentability of the claimed subject matter. In contrast, under Rule 105, Applicants may be required to provide information “reasonably necessary to the examination or treatment of a matter in the application.” MPEP 704.12(a). In other words, under Rule 105, the Applicant may be asked to provide information that would not be required to be provided under Rule 1.56. Id. MPEP 704.11(a) gives a long list of examples of information that may be categorized by the Office as “reasonably required.” With time, and as we see what is actually required in applications selected for the PIER pilot program, more substantive analysis as to the level of burden can be done.
The option to delay examination appears to be the only real potential benefit to the Applicant under the pilot program. For example, some Applicants may find it desirable to delay prosecution and associated costs for up to 12 months while a product is under development or while prosecution develops in other countries. However, the current average time to first office action is estimated to be about 18 to 24 months, so there is already a significant delay before substantive examination begins. In fast moving technology spaces, such as consumer products, energy, and artificial intelligence, waiting 2-3 years from filing just to receive a first office action may be unappealing, as Applicants may prefer to secure patent rights quickly. For pharmaceutical and biological inventions, the option to delay may be undesirable as the pilot program indicates that the delay period counts as applicant delay and will reduce any patent term adjustment that accrues.
Given the time and expense of preparing a patent application, filing a PCT application, and then filing a U.S. national phase application, we expect that few Applicants will choose to abandon their application due to the international search report and written opinion without ever having filed claim amendments or arguments. Applicants are accustomed to receiving at least one round of rejections and filing clarifying or narrowing amendments to overcome prior art rejections. Rarely if ever is the international search report and written opinion so devastating that an Applicant will not even attempt to respond to the rejections. As Applicants already have the right to expressly abandon their application at any time, and abandoning under the pilot program does not provide refund of search fees, it seems unlikely that the pilot program will result in many abandonments. The real test will be seeing how burdensome these Requirements for Information bear out to be.
Should the PTO seek to increase Applicant action taken in response to the pilot program to help reduce inventory and backlog, the PTO should consider refunding at least a portion of the application filing fees should Applicants choose to abandon their application, and/or exclude the 12-month delay period from counting as Applicant delay for purposes of calculating patent term adjustment calculation to provide greater incentive for Applicants to choose to abandon or delay.
Should you have further questions about the PIER pilot program, please contact the authors of this article.
[1]See https://www.law360.com/ip/articles/2464763 (Subscription required)
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