USPTO Announces Streamline Claim Set Pilot Program, Though There are Caveats
The USPTO has announced a new pilot program, available for a limited time, to provide an accelerated first action on the merits, with details of the new program spelled out in a Federal Register notice. Although the pilot program offers newly-filed applications with reduced claim sets a chance for a quick action on the merits, participation in the program is not free, and there are some limitations and downsides.
The pilot program is only for newly-filed utility applications, not national-phase entries, divisionals, continuations, or CIPs. In addition, no applications with nonpublication requests will be accepted into the program. Only applications that have one independent claim, and a maximum of ten total claims, are eligible. There is also a small fee ($150 for a large entity) for petitioning to be a part of the pilot program.
Claims may be amended to reduce the claim set to no more than 10 claims and one independent claim in order to qualify for the program. (And the notice clarifies that a claim that references another claim but isn’t a proper dependent claim is counted as an independent claim.) After an application is accepted into the pilot program the claims cannot thereafter be amended to include more than one independent claim or more than ten total claims. Thus, if multiple of the dependent claims are considered allowable subject matter, only one may be rewritten in independent form to put the application into condition for allowance – a continuation application would be required to get the other claim with allowable subject matter allowed as an independent claim.
An application accepted for the program gets made special (taken up out of turn by an examiner), but only until a first Office Action on the merits is issued. And if the examiner wants to issue a restriction requirement (or more likely, an election of species requirement), then an applicant either has to make a telephone election, or else lose special status.
The pilot program has an initial duration of one year, and is limited to about 200 applications per art unit. It is a low-cost way to get a first Office Action more quickly, and may be worth use by applicants who are willing to put up with the limitations on the number of claims, which (as noted above) continue throughout the pendency of the application.
As we continue to monitor developments at the USPTO, we will do so in order to create intellectual property strategies that protect our client’s interests. Contact us for more information about these and other topics.
As we continue to monitor developments at the USPTO, we do so to create intellectual property strategies that protect our client’s interests. Contact us for more information about these and other topics.
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