USPTO Expedited Patent Examination Changes – Give and Take

Streamlined Claim Set Pilot Program
In an initiative to evaluate how having a limited number of claims under examination impacts pendency and examination quality the USPTO recently launched its Streamlined Claim Set Pilot Program.

Upon successful application utility patent applications that qualify for the program will get their first examination expedited and thereafter return to regular examination status.

Eligible applications must:

• be original (non-reissue), noncontinuing utility applications filed under 35 U.S.C. 111(a) before 27 October 2025. For foreign applicants this allows for applications filed under the Paris Convention, but PCT national phase applications do not qualify.
• not have been issued a first Office action; and not yet docketed to an examiner
• contain no more than one independent claim, no more than 10 total claims, no multiple dependent claims, and all claims other than the independent claim must be in proper dependent form under 35 U.S.C. 112(d), refer to the previous claim in the preamble and be directed to the same statutory class as the independent claim. To meet this requirement the petition to make special under the program may be submitted with a preliminary amendment to amend the claims to comply with the claim requirements of the program. A preliminary amendment to the claims submitted after the filing date of the petition will not be considered in deciding the petition.
• be certified by the applicant that no inventor or joint inventor has been named on more than three other applications filed under this program.
• have been electronically filed using Patent Center with the specification, claim(s), and abstract conforming with the USPTO requirements for submission in DOCX format.
• have rescinded (with Form PTO/SB/36) on or before the filing date of the petition any previous non-publication request for the application.

The petition fee is US $150 (or $US $60 for small entities) and petitions will only be accepted until the earlier of 26th November 2026 or until about 200 applications for each of the USPTO’s nine  patent technology centers have been accepted into the pilot program.
This pilot program will appeal to utility patent applicants seeking faster prosecution before the USPTO. Currently the delay between filing and first examination is around 22-months.

Tweaks to USPTO’s Expediting of PPH Applications
If a foreign applicant’s application does not qualify for the Streamlined Claim Set Pilot Program, they can still qualify for expedited examination if they have a corresponding application with at least one accepted claim in an intellectual property office that has a Patent Prosecution Highway (PPH) agreement with the USPTO. IP Australia and the Intellectual Property Office of New Zealand (IPONZ) along with the USPTO and 25 other IPOs belong to the Global Patent Prosecution Highway (GPPH). Consequently, applicants with corresponding applications in Australia or New Zealand having at least one accepted claim can get expedited examination before the USPTO.

However, the USPTO has recently announced changes to how quickly expedited examination will occur for applications seeking expedited examination via a PPH agreement. Currently the delay between filing and first examination for qualifying PPH applications is around 7.5 months, which compares favorably with the 22-months for non-expedited applications. The USPTO is seeking to reduce the time from filing to first examination for non-expedited applications and will commit more resources to those and less to expedited PPH applications. Nonetheless, it will still seek to retain the appeal of expediting examination via a PPH agreement by targeting the time frame for first examination of such applications to being half that of the timeframe for non-expedited applications. As the timeframe for the latter decreases so will that for the former.

Authors: Quinn Miller and Jim Piper