“The Risks and Rewards of 3 Patent Review Pilot Programs”

The USPTO’s newest patent examination pilot programs promise faster, more efficient prosecution, but they also introduce strategic decisions that could affect patent term, prosecution costs, and portfolio value. In a recent Law360 article, Marshall Gerstein Partner David Gass examines three USPTO pilot programs aimed at reducing the agency’s application backlog while offering practical guidance on how applicants can avoid unintended consequences.

As David explains, the new Applicant Predocketing Notice (PDN) program gives applicants an opportunity to revisit pending applications before examination begins, but that opportunity comes with important tradeoffs. “The three-month advance notice of impending examination is an opportunity to align U.S. prosecution with outcomes at other offices and with commercial objectives, and to prune portfolios while fee recovery is available,” he writes. However, applicants should also be “mindful of the potentially devastating PTA reduction risk” before filing preliminary amendments.

David also discusses the new PCT Informed Examination Request (PIER) program, which requires applicants to respond or risk abandonment, and the Streamlined Claim Set Pilot Program, which now offers fee-free accelerated examination for qualifying applications.

His overarching advice is straightforward: “Do not change your filing strategy based on the PIER program.” Instead, applicants should carefully evaluate each program on a case-by-case basis, monitor deadlines closely, and take advantage of opportunities that align with their broader intellectual property and business objectives.

Read the full Law360 article here.