Overview

The United States Patent and Trademark Office (USPTO) is launching the Streamlined Claim Set Pilot Program (the pilot program) to evaluate whether limiting claim number and format can reduce pendency and improve examination quality. Accepted applications will be advanced out of turn for the first Office Action only. The pilot program began on October 27 and is expected to run either until October 27, 2026, or until approximately 200 applications per USPTO Technology Center are accepted. The USPTO may end the pilot program earlier based on capacity or participation. The USPTO will publish aggregate participation data and evaluate impacts on pendency and examination quality.

Key Points

  • Eligibility: Original utility applications filed before October 27 are eligible. No national stage, continuation, divisional, or continuation-in-part applications are permitted. Applications must be filed electronically via the Patent Center in DOCX format without a nonpublication request. Existing nonpublication requests must be rescinded by the time of petition.
  • Claim limits: At the time of petition, a patent application must have no more than one independent claim, no more than 10 total claims, and no multiple dependent claims. All dependent claims must be in proper dependent form under 35 U.S.C. § 112(d). They must reference the previous claim in the preamble, include every limitation of the claim from which they depend, and remain in the same statutory class as the independent claim.
  • Preliminary amendments: Applicants may use a preliminary amendment to conform the claim set before or with the petition. However, reducing claims via a preliminary amendment does not entitle an applicant to a refund of previously paid excess claims fees.
  • Early action: The petition must be filed before the first Office Action (including any written restriction requirement) and preferably before docketing to an examiner.
  • Petition form and petition fee: File USPTO Form PTO/SB/472 with the petition fee under 37 CFR § 1.17(h).
  • Limited special status: After the first Office Action (including any written restriction requirement), special status ends and the case returns to the regular docket. Standard response periods apply, and amendments that break the pilot program’s claim limits or dependency format may be treated as nonresponsive. Examiners may provide a shortened period to correct bona fide, noncompliant replies.
  • Participation cap: Each petition must certify that no named inventor is on more than three other applications for which a petition into the pilot program has been submitted.
  • No do-overs: Only one petition may be submitted per application. Deficient petitions are dismissed without refund and without the opportunity to correct any deficiencies.

Strategic Considerations

This pilot program may be well-suited for applicants prioritizing an earlier first Office Action in an original patent application at the expense of broader claim coverage within the patent application. Applicants should consider whether streamlined claims sufficiently protect core embodiments, pending later pursuit of additional claims (e.g., via future continuing application filing(s)). Applicants should weigh the impact of rescinding nonpublication requests if confidentiality is important. Given the limit of approximately 200 applications per Technology Center, we recommend that interested applicants file a petition as soon as possible.