Recent USPTO Programs to Ease the Backlog of Examinations - The Bad, the Benign, and the Marginally Useful
The USPTO has been on a kick lately to get applicants to weed out the backlog of unexamined applications. Toward this end the USPTO has rolled out three new programs in the last two months – the PCT Informed Examination Request (PIER) pilot program, the Applicant “Pre-Docketing Notice” (APDN) pilot program, and a new policy to issue show-cause orders for pending applications that, if issued as patents, would have no patent term.
The PIER program (announced in a Federal Register notice published on April 9, 2026) is a cumbersome program, one that puts a burden on applicants, one that does not justify any USPTO efficiency improvement that might result from it. The program involves the USPTO “intermittently” selecting unexamined national-stage PCT applications, and issuing a requirement for information from the applicant (under 37 CFR 1.105), with a two-month response deadline. A response from the applicant is required to avoid abandonment of the application, and the applicant must choose to 1) proceed with examination, 2) defer examination for 12 months, or 3) expressly abandon the application. The USPTO provides a form for responding to PIER requirements for information.
There isn’t a great benefit for applicants. Almost all PCT national-stage applications are made with the knowledge of the PCT international stage results (search and perhaps preliminary examination). Applicants should have already made the decision to proceed when the national-stage entry is filed (perhaps with amendments to the claims). Moreover, applicants retain the option after filing a national-stage entry to file a preliminary amendment, or to expressly abandon the application in order to receive a refund of some of the fees paid. Therefore, the applicant should not need notification from the USPTO to be prompted to take these actions.
So, are there any advantages to applicants to offset the time and cost to make the mandatory response to PIER requirements for information? A little benefit appears in the form of the response option to defer examination for 12 months. This is a no-cost nonterminable one-time deferral, distinct from the suspension of action mechanisms set forth in 37 CFR 1.103. Overall, the PIER pilot program creates a burden to applicants, forcing them to respond to notices, granting them only the opportunity for a limited deferral of examination in return.
In contrast to the burden of the PIER pilot program, the APDN program (announced on May 29, 2026) requires no action on the part of the applicant. In the APDN pilot the Office will issue a “pre-docketing notice” about three months before the application is expected to be docketed for substantive examination. This gives the applicant notice to amend the claims or to file an express abandonment (for a partial refund of fees). These options are and have always been available to an applicant in the time-period between filing and the issuance of the first Office Action on the merits. But given that the pre-docketing notice is for information only, and that no response by the applicant is needed, the APDN program is harmless, except for the time spent in reviewing and handling incoming pre-docketing notices.
The last and most recent of the USPTO initiatives in this area is an announcement (on June 4, 2026) that the USPTO will be (has been?) issuing show-cause orders for pending applications that, if issued as patents, would have no patent term. This situation was ruled on last year by the Federal Circuit in In re Forest, No. 2023-1178 (Fed. Cir. April 3, 2025) (see my blog piece here), holding that a patentee was only entitled to provisional patent rights if an issued patent has a term. In the Forest case the court ruled that the applicant was not entitled to pursue an application which would only involve provisional patent rights.
The new initiative uses the Forest decision as a basis for issuing show-cause orders to applicants whose applications would result in a patent without any term. Applicants receiving the orders would have to show cause as to why prosecution of such pending applications should continue, even though any resulting patent would issue without exclusionary rights. Assuming that the USPTO accurately identifies such applications, the show-cause orders will prevent waste of resources in prosecuting applications for which applicants would receive no benefit. However, the number of applications involved is likely to be very small, resulting in only a minor benefit to the USPTO.
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