USPTO Announces Streamlined Claim Set Pilot Program for Expedited First Action
Introducing the 1/10 Rule
Director John A. Squires and the United States Patent and Trademark Office (USPTO) are implementing a new “Streamlined Claim Set Pilot Program” (p. 1) designed to test the effects of limited claim sets on examination efficiency. According to the notice set to publish in the Federal Register on October 27th, the agency’s stated goal is “to evaluate how having a limited number of claims under examination impacts pendency and examination quality” (Notice, p. 1).
For patent applicants who meet the program’s specific requirements, the primary benefit is the potential for “expedited examination” (p. 1). Applications accepted into the pilot “will be advanced out of turn (i.e., accorded special status) for examination until a first Office action is issued” (p. 1). This initiative appears aimed at testing a method “to enhance efforts to reduce the USPTO’s inventory and pendency” (p. 1).
Core Requirements for Participation
Participation is not open to all applications. It is restricted to “original (non-reissue), noncontinuing, utility application[s]” (p. 3) that were “filed under 35 U.S.C. 111(a) before [October 27, 2025]” (pp. 3-4). “National stage applications filed under 35 U.S.C. 371 are not eligible” (p. 3). This indicates the new path is designed for currently pending applications only, unless an applicant files over this weekend.
To qualify, an application must meet several strict requirements.
Claim Limits: The application must contain “no more than one independent claim, no more than ten total claims, [and] no multiple dependent claims” (p. 5).
Dependency Format: The program mandates a specific dependency format. All dependent claims “must refer to a previous claim” and “include every limitation of the previous claim referred to” (p. 6). The reference “must appear in the preamble” and the claim “must be directed to the same statutory class of invention as the independent claim” (p. 6). For example, the USPTO notice clarifies that if claim 1 is a widget, a claim reciting “A method of producing the widget of claim 1” would not comply because it is not in the same statutory class (p. 7).
Preliminary Amendments: Applicants can conform to these claim requirements by filing a preliminary amendment “before or with the petition to make special” (p. 5).
Inventor Limits: The program places a cap on prolific inventors. An applicant must certify that “no inventor or joint inventor has been named as the inventor or a joint inventor on more than three other nonprovisional applications” that have filed a petition for this program (pp. 3, 8).
Form and Fees: The petition must be filed using Form PTO/SB/472 (p. 5) and be “accompanied by the fee set forth in 37 CFR 1.17(h)” (p. 4). This petition fee is $150 for a standard entity, $60 for a small entity, or $30 for a micro entity.
Procedural Mandates: The petition must be filed electronically (p. 7), and the application itself must have been filed using the DOCX format (pp. 7-8). Applicants must also rescind any nonpublication request (p. 7).
The Process and Its Limitations
A petition must be filed “before the issuance of a first Office action, including a written restriction requirement” (pp. 3, 5). The USPTO cautions applicants not to file a petition for an application “that is already docketed to an examiner” (p. 3). The agency states it “will generally dismiss a petition” if the application is docketed when the petition is taken up for decision (pp. 3, 5, 8).
If an application is accepted, it is placed on an examiner’s special docket (p. 8). This special status is finite. “After the first Office action,” the application “will no longer be treated as special during examination” (pp. 4, 8).
The USPTO “anticipates fewer restriction requirements” in this program (p. 9). If a restriction is necessary, the examiner will first attempt “telephone restriction practice” (p. 9). If the applicant does not make an election, a “written restriction requirement” will be mailed (p. 10), and that document “would be considered the ‘first Office action’” (p. 10). This means the special status would end upon issuance of a written restriction (p. 10).
Once in the program, applicants must adhere to the claim limits. An examiner “may refuse entry of any amendment” that would result in more than one independent claim, more than ten total claims, or a multiple dependent claim (p. 5).
Analysis: Benefits, Challenges, and Risks
The program offers a clear benefit: a faster first Office action for applicants with a single, focused invention. This could be valuable for IP owners seeking a quick initial assessment from the USPTO. For the agency, it is a data-gathering effort to see if these limitations “reduce the USPTO’s inventory and pendency” (p. 1).
The 1/10 claim limit is a significant constraint, requiring applicants to sacrifice claim breadth for speed. The “inventor limit” means that applicants with prolific inventors must strategically select which applications (up to four) will use the program (p. 8).
The requirement that the application must have been “in compliance with the USPTO requirements for submission in DOCX format at the time the application was filed” (pp. 7-8) may exclude many applications from the existing backlog that were filed before DOCX was mandatory.
Patent practitioners should consider the procedural and strategic risks.
Risk of Dismissal: The most immediate risk is financial. The petition must be filed before an application is docketed (pp. 3, 5). The USPTO “will not refund the 37 CFR 1.17(h) petition fee if an application is not accepted into the pilot program” (pp. 8-9). This includes “occurrences where the petition is dismissed because the application has been docketed to an examiner” (p. 9). Be sure to check that case’s status before filing a petition.
Preliminary Amendment Risk: If an applicant files a preliminary amendment to meet the 1/10 claim limit, the “entry of such a preliminary amendment will not... be contingent upon the grant of the petition” (p. 3). An applicant could, therefore, file an amendment permanently narrowing the claim set, have the petition denied, and be left with the narrower claims in the normal examination queue.
Limited Duration: The expedited status is temporary. It evaporates “after the first Office action” (p. 8). This is not a “Track One” equivalent for the entire prosecution.
No Withdrawal: The notice specifies “There is no provision for withdrawal from the pilot program” (p. 11).
Program Duration and Outlook
This is a temporary program. It is set to run for twelve months or “until each Technology Center that examines utility applications has been docketed at least approximately 200 applications accepted into the pilot program, whichever occurs first” (pp. 1-2, 9). The USPTO “may, at its sole discretion, terminate the pilot program for any reason” (p. 2).
The USPTO intends to “collect data on the progression of applications accepted into the pilot program” (p. 12) to “evaluate outcomes” (p. 12).
For patent attorneys and inventors, this pilot presents a strategic choice: weigh the significant benefit of an accelerated first action against the stringent claim limitations and the financial risk of a non-refundable, dismissed petition.
The requirement that the application be filed before the Federal Register notice is published seems counterintuitive for portfolio developers large and small. Still, applicants and representatives with pending applications should consider whether to file a petition and (in many cases) a preliminary amendment. A small entity paying $60 to enter feels less risky, but the draconian take-it-or-leave-it discretion will scare plenty of patent-pending applicants away from this pilot program.
Time will tell if such a program gains traction and ultimately helps reduce the backlog.
Disclaimer: This is provided for informational purposes only and does not constitute legal or financial advice. To the extent there are any opinions in this article, they are the author’s alone and do not represent the beliefs of his firm or clients. The strategies expressed are purely speculation based on publicly available information. The information expressed is subject to change at any time and should be checked for completeness, accuracy and current applicability. For advice, consult a suitably licensed attorney and/or patent professional.