SUPPLEMENTARY INFORMATION:

New patent applications ordinarily are taken up for examination in the order of their U.S. filing date or national stage entry date. See 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. See37 CFR 1.102 and Discontinuation of the Accelerated Examination Program for Utility Applications,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),^[1] 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.

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 ( i.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.

Definition

Noncontinuing application: 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), ( printed page 48580) or 386(c) and 37 CFR 1.78. See 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.

Part I. Requirements To Participate

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.

(1) Types of Applications and Time for Filing Petition

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.

(2) The USPTO Form Required for Filing Petition

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 www.uspto.gov/​PatentForms). 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.

(3) Claim Limit, No Multiple Dependent Claims, Dependency Format, and Agreement

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 being noncompliant with the dependency format specified in this notice. An applicant may meet the claim requirements of the pilot program by filing a preliminary amendment in compliance with 37 CFR 1.121 before or with the petition to make special. See section 714 of the MPEP, subsection II, for more information on the manner of making amendments under 37 CFR 1.121. The preliminary amendment may accompany the petition to make special. Preliminary amendments filed after the petition to make special is filed will not be considered when deciding the petition. A preliminary amendment reducing the number of claims will not entitle an applicant to a refund of previously paid excess claims fees. See section 607 of the MPEP, subsection III.

To comply with the dependency format for this pilot program, a claim must be in proper dependent form under 35 U.S.C. 112(d). That is, the claim must refer to a previous claim, include every limitation of the previous claim referred to, and then specify a further limitation of the subject matter of the previous claim. See section 608.01(n) of the MPEP, subsection III. In addition, to comply with the dependency format for this pilot program, the reference to the previous claim must appear in the preamble, and the claim must be directed to the same statutory class of invention as the independent claim.

For example, consider a claim set having independent claim 1, which recites “A widget comprising A and B,” and claim 2.

• If claim 2 recites “The widget of claim 1 further comprising C,” the claim would comply with the dependency format for the pilot program.
• If claim 2 recites “A fastener for use in securing the widget of claim 1,” the claim would not comply with the dependency format for the pilot program because it does not include all of the limitations of the previous claim.
• If claim 2 recites “A device comprising the widget of claim 1 fastened to a gadget,” the claim would not comply with the dependency format for the pilot program because the reference to the previous claim does not appear in the preamble.
• If claim 2 recites “A method of producing the widget of claim 1,” the claim would not comply with the dependency format for the pilot program because claim 2 is not directed to the same statutory class of invention as the independent claim.

If the application is granted special status under the program, the applicant must agree to comply with the claim requirements of the pilot program during the remainder of pendency.

(4) Publication Requirement for Applications

If there is a nonpublication request in the application, the applicant must file a rescission of the nonpublication request no later than the time the petition to make special is filed. The applicant may use form PTO/SB/36 to rescind the nonpublication request.

(5) Electronic Filing of Petition and Application Required

The petition to make special may be made only by filing form PTO/SB/472, which must be filed electronically using the USPTO's Patent Center (at www.uspto.gov/​PatentCenter). Applicants must file the petition using the document description (“Petition for Streamlined Claim Set Pilot”) indicated on form PTO/SB/472. In addition, the application must have been filed using the USPTO patent electronic filing system (currently Patent Center).

(6) Use of DOCX Format for the Specification, Claim(s), and Abstract

DOCX format delivers a number of benefits, including increased efficiencies and higher data quality, that enhance the USPTO's ability to expedite examination. Thus, for an application to be eligible for the pilot program, the specification, claim(s), and abstract must be in compliance with the USPTO requirements for submission in DOCX format at the time the application was filed. See37 CFR 1.16(u).

(7) Filing Limitations

An applicant may file a petition to participate in the pilot program if no inventor or joint inventor has been named as the inventor or a joint inventor on more than three other nonprovisional patent applications in ( printed page 48581) which a petition to make special under this pilot program has been filed. Therefore, if the inventor or any one of the joint inventors of the instant application has been named as the inventor or a joint inventor on more than three other nonprovisional applications in which a petition under this pilot program has been filed, then a petition for the instant application may not be appropriately filed. Form PTO/SB/472 includes a certification statement that no inventor or joint inventor has been named on more than three other nonprovisional applications in which a petition to make special under the pilot program has been filed.

Part II. Internal Processing of the Petition Under the Pilot Program

If applicant files a petition to make special under the pilot program, the USPTO will decide the petition once pre-examination processing of the application is completed. If the petition is granted, the application will be accorded special status under the pilot program. The application will be placed on an examiner's special docket until issuance of a first Office action. After the first Office action, the application will no longer be treated as special during examination. For example, if an amendment is filed after the first Office action, it will be placed on the examiner's regular amended docket.

Meeting the requirements in Part I of this notice will not ensure acceptance into the pilot program. The USPTO will generally dismiss a petition under the pilot program if the application has already been docketed to an examiner in a Technology Center at the time the petition is being reviewed for decision. The USPTO will not refund the 37 CFR 1.17(h) petition fee if an application is not accepted into the pilot program. This includes occurrences where the petition is dismissed because the application has been docketed to an examiner when the petition is taken up for decision despite being filed before the application was docketed to the examiner. See section 607.02 of the MPEP.

The purpose of the pilot program is to assess the effect of having a limited number of claims under examination on pendency and examination quality. As such, the USPTO intends to continue accepting applications into the pilot program until each Technology Center that examines utility applications has been docketed at least approximately 200 pilot applications. This is to make certain that the data collected during the pilot program is a balanced representation of examination across all technology areas. The USPTO will indicate on its website the total number of petitions filed and the number of applications accepted into the pilot program for each Technology Center.

If the petition to make special under the pilot program does not comply with the requirements set forth in this notice, the USPTO will dismiss the petition. In view of the limited duration of the pilot program and the limited number of applications being accepted into the pilot program, an applicant will not have an opportunity to correct deficiencies in the petition after a petition is dismissed. An applicant may file only a single petition under the pilot program for an application.

Part III. Requirements for Restriction

The USPTO anticipates fewer restriction requirements than in non-pilot program applications due to the claim set requirements of the pilot program. If the examiner believes that a requirement for restriction is appropriate, including an election of species requirement, the examiner should try to contact the applicant in accordance with the procedure for telephone restriction practice set forth in section 812.01 of the MPEP. If the applicant does not make an election (for example, does not reply to a request for a telephonic interview within five business days of the examiner's request), the examiner will mail a written restriction requirement, and the application will no longer be treated as special. In such cases, the written restriction requirement would be considered the “first Office action” in terms of this pilot program.

Part IV. Office Actions and Replies Under the Pilot Program

Applications that are accorded special status under the pilot program will be placed on an examiner's special docket until a first Office action is issued. After the first Office action, the application will be entered into the examiner's regular docket.

The time periods set for reply in Office actions for an application granted special status under the pilot program will be the same as those set forth in section 710.02(b) of the MPEP. A reply to an Office action must be fully responsive to the rejections, objections, and requirements made by the examiner. Any amendment filed in reply to an Office action may be treated as not fully responsive if it attempts to (1) add claims that would result in more than one independent claim and/or more than ten total claims pending in the application; (2) add any multiple dependent claim(s); or (3) present a claim, other than the independent claim, that does not comply with the dependency format set forth in Part I, section 3, of this notice. If a reply to a nonfinal Office action is not fully responsive for failing to comply with the pilot program's claim requirements but is a bona fide attempt to advance the application to final action, the examiner may, at the examiner's discretion, provide a shortened statutory period of two months for the applicant to provide a fully responsive reply. Extensions of this time period under 37 CFR 1.136(a) to the notice of nonresponsive amendment will be permitted, 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). However, any further nonresponsive amendment typically will not be treated as bona fide, and therefore, the time period set in the prior notice will continue to run.

Part V. After-Final and Appeal Procedures

Any amendment, affidavit, or other evidence after a final Office action and prior to an appeal must comply with 37 CFR 1.116. During the appeal process, the application will be treated in accordance with the normal appeal procedure. See MPEP Chapter 1200.

Part VI. Proceedings Outside of the Normal Examination Process

If an application becomes involved in proceedings outside of the normal examination process (for example, a secrecy order, derivation proceeding, or petition under 37 CFR 1.181 through 1.183), the application will not be under special status during those proceedings. For example, while under a secrecy order, the application will be treated in accordance with the normal secrecy order procedures and will not be in special status under the pilot program. Once the proceeding outside of the normal examination process is completed, the application will continue in special status, as described above in this notice.

Part VII. Withdrawal From the Pilot Program

There is no provision for withdrawal from the pilot program. An applicant may abandon an application that has been granted special status under the pilot program in favor of a continuing application. However, a continuing application will not be granted special status based on the petition filed in the parent application. Only noncontinuing applications are eligible for this pilot program. ( printed page 48582)

Part VIII. Evaluation of the Pilot Program

The pilot program is designed to allow the USPTO to evaluate how having a limited number of claims under examination affects pendency and examination quality. Accordingly, the USPTO intends to collect data on the progression of applications accepted into the pilot program throughout the examination process. During or after the pilot program, the USPTO will provide avenues for participants to provide feedback on their experience with the pilot program. As applicable, the USPTO will follow the United States Government Accountability Office's (GAO's) leading practices for effective pilot design, including (1) establishing clear objectives; (2) collecting relevant data; (3) evaluating outcomes; (4) considering scalability; and (5) ensuring stakeholder communication. See GAO, Data Act: Section 5 Pilot Design Issues Need to Be Addressed to Meet Goal of Reducing Recipient Reporting Burden, GAO-16-438 (April 19, 2016).