PIER at the USPTO: Application Selection and Patent Term Consequences
Executive Summary: The USPTO’s PCT Informed Examination Request (PIER) pilot requires selected U.S. national-stage applicants to choose whether to proceed with examination, defer examination for twelve months, or expressly abandon the application after considering the international work products. Selection considers application age and pendency in the relevant technology area, with a preference for applications containing X- or Y-category references; favorable international findings do not guarantee exclusion. Applicants must submit a timely, properly signed election and assess whether supported claim amendments, an information disclosure statement, or a separate Patent Prosecution Highway request would advance their objectives. The requirement, response timing, and deferral election can each affect patent term adjustment, while delayed issuance may reduce the period of protection remaining after grant even when no adjustment is available. This article explains those procedural and strategic consequences and argues that PIER’s success should be measured through meaningful comparisons, applicant costs, substantive examination outcomes, and the distinction between informed abandonment and procedural failure.
Introduction
An applicant that has already entered the U.S. national stage may now receive an additional requirement to decide whether examination should proceed. The USPTO's PCT Informed Examination Request Pilot Program, or PIER, requires selected applicants to elect examination, a twelve-month delay, or express abandonment after considering the PCT international-phase work products. An unanswered requirement can result in abandonment. See U.S. Pat. & Trademark Off., USPTO Implementing Examination Request Pilot Program for National Stage Applications (Apr. 8, 2026), https://www.uspto.gov/subscription-center/2026/uspto-implementing-examination-request-pilot-program-national-stage.
The Office announced a selection period beginning April 9, 2026, and ending April 9, 2027, subject to extension or earlier termination. PCT Informed Examination Request Pilot Program, 91 Fed. Reg. 17,949, 17,950 (Apr. 9, 2026) [hereinafter PIER Notice]. PIER requires selected national-stage applicants to make a consequential prosecution decision before substantive examination. Its practical significance includes the effects of the Office's notice, the applicant's election, and the timing of the response. The program's value should therefore be assessed by whether it improves prosecution decisions and examination efficiency after accounting for applicant costs, delayed access to granted rights, and patent term consequences.
Which Applications Are Selected
PIER applies to selected, unexamined national-stage applications under 35 U.S.C. § 371. Applications filed under § 111(a) are excluded, including PCT bypass continuations filed through that route. The USPTO controls participation and will not grant petitions to enter, abstain, or obtain removal from the program. U.S. Pat. & Trademark Off., PCT Informed Examination Request Pilot (PIER) Program, https://www.uspto.gov/patents/basics/international-protection/patent-cooperation-treaty/pier-program (last visited Oct. 17, 2026) [hereinafter PIER Program Page]. Only applications that have completed pre-examination processing are selected. PIER Notice, 91 Fed. Reg. at 17,950.
The implementation announcement supplies more detail than the notice's eligibility provisions. Selection takes account of application age across technology areas with substantial pendency. Initially, the Office planned to select applications expected to reach examiner docketing within five to six months, favoring files containing at least one X- or Y-category reference in the international work products. U.S. Pat. & Trademark Off., USPTO Begins Issuing Requirements for Information Under the PIER Pilot Program for National Stage Applications (May 21, 2026), https://www.uspto.gov/subscription-center/2026/uspto-begins-issuing-requirements-information-under-pier-pilot-program [hereinafter Implementation Announcement].
An X reference indicates a document considered to defeat novelty alone or inventive step in light of common general knowledge. A Y reference indicates a document considered to defeat inventive step when combined with other documents. Those classifications identify potentially significant art; they are not U.S. claim rejections. See U.S. Pat. & Trademark Off., Manual of Patent Examining Procedure § 1844.01(VII)(A)(1) (9th ed. rev. 01.2024, Nov. 2024) [hereinafter MPEP].
The X/Y factor is a preference, so a favorable opinion does not establish an exemption. The published program materials identify no fixed age cutoff, selection percentage, comprehensive list of participating art units, or detailed sampling method. Applicants consequently cannot predict selection from the published factors alone. See PIER Program Page, supra; Implementation Announcement, supra. For portfolio planning, counsel should monitor eligible applications without assuming that either favorable search results or recent amendments will prevent a notice.
Responding to a PIER Requirement
The incoming requirement uses Form PTO-2357 and document code PIER.RFI. Implementation Announcement, supra. It invokes 37 C.F.R. § 1.105, the information-request procedure. A PIER requirement sets a two-month response period, extendable under § 1.136(a) to six months total. PIER Notice, 91 Fed. Reg. at 17,950; MPEP § 704.13. Counsel should docket both the initial deadline and the final permissible response date when reporting the requirement.
The required response is Form PTO/SB/478. It must be properly signed and contain exactly one election. When filing electronically, the applicant must use Patent Center's document description “Reply PIER Pilot,” associated with document code PIER.REPLY. U.S. Pat. & Trademark Off., PIER Pilot Program—Reply to Requirement for Information Under 37 CFR 1.105, Form PTO/SB/478, at 1 (Apr. 2026), https://www.uspto.gov/sites/default/files/documents/sb0478.pdf [hereinafter PIER Reply Form]. A preliminary amendment should accompany the required election when appropriate; filing an amendment alone does not satisfy the prescribed response procedure. See PIER Program Page, supra.
An answer stating that the requested information is unknown or not readily available is not a proper PIER reply. The notice identifies the twelve-month deferral election as the available option when the applicant needs more time to decide whether to proceed. PIER Notice, 91 Fed. Reg. at 17,951.
An incomplete response should not be treated as a reliable way to obtain additional decision time. A bona fide reply that inadvertently omits a requirement may receive a deficiency notice allowing correction, but that treatment is discretionary and does not excuse deliberate omissions. The corrective period must be docketed from the actual notice; successive defective submissions do not provide an unlimited series of extensions. See 37 C.F.R. § 1.135(c); MPEP § 704.12(c). Failure to provide the complete reply required to avoid abandonment remains consequential even though the communication contains no substantive rejection. See 37 C.F.R. § 1.135(a)–(b).
Choosing Among the Three Elections
Proceeding with examination moves the application toward examiner docketing. The applicant may also submit a preliminary amendment. PIER Program Page, supra. For a commercially important invention, proceeding ordinarily avoids the strategic uncertainty of committing to a year of deferral. Counsel should assess any amendment on its merits and explain whether it would better align the claims with the invention's current commercial use.
Applicants seeking faster examination should separately evaluate the Patent Prosecution Highway. PPH provides accelerated examination based on qualifying favorable work and corresponding claims. Counsel should assess eligibility before substantive examination begins and confirm that all claims presented in the U.S. application satisfy the applicable claim-correspondence requirements. See U.S. Pat. & Trademark Off., Implementation of the Global and IP5 Patent Prosecution Highway (PPH) Pilot Programs with Participating Offices § III.A(3)–(4), at 2–3, https://www.uspto.gov/sites/default/files/documents/global-ip5.pdf (last visited Oct. 17, 2026). A PIER election to proceed does not itself confer PPH status. Counsel must coordinate any separate PPH request with the required PIER response.
The deferral election provides twelve months measured from the USPTO's receipt of the request, without the processing fee required for an ordinary suspension or deferral under § 1.103. Once approved, the PIER delay cannot be terminated early. PIER Notice, 91 Fed. Reg. at 17,951–52. That commitment may be sensible when the applicant needs time to obtain financing, evaluate a market, or decide whether a licensing opportunity warrants further spending. The assessment should include the possibility that those circumstances will change quickly. An expected product launch or enforcement need may make the inability to resume examination early more costly than the immediate savings.
Express abandonment requires a more definitive instruction. Counsel should confirm that the client intends to relinquish the application and consider any continuing-application strategy before filing. Signature authority also matters: a practitioner acting only in a representative capacity may expressly abandon a prior application when filing a continuing application, but that exception does not authorize routine abandonment by every practitioner who can sign other prosecution papers. 37 C.F.R. § 1.138(b); MPEP § 711.01.
For that exception, the PIER reply must be accompanied by a separate letter stating that the application is expressly abandoned in favor of a continuing application. In other circumstances, the abandonment election must be signed by the practitioner of record or an applicant who is not a juristic entity. PIER Notice, 91 Fed. Reg. at 17,951. The separate-letter requirement for a practitioner acting in a representative capacity is mandatory, even though the notice merely recommends a separate abandonment request for other properly signed abandonment elections. Id.
The pilot notice confirms that § 1.138(d) provides no search- or excess-claims-fee refund through a PIER abandonment. PIER Notice, 91 Fed. Reg. at 17,951. The regulation independently confines that refund mechanism to specified applications filed under § 111(a) and § 1.53(b). That refund mechanism was already unavailable to these § 371 applications. 37 C.F.R. § 1.138(d); MPEP § 711.01(III). The financial rationale for abandoning is principally the avoidance of future prosecution spending.
Using the International Work Products
The international search report and written opinion provide a useful starting point for evaluating the pending claims. Any later Chapter II report may supply additional analysis. Those opinions remain preliminary and nonbinding, and the PCT permits national offices to apply their own patentability criteria. Patent Cooperation Treaty art. 33(1), (5), June 19, 1970, 28 U.S.T. 7645, 1160 U.N.T.S. 231; MPEP § 1845.01(V). An adverse international opinion therefore calls for analysis of the cited art and the actual U.S. claims, rather than an assumption that the same result must follow domestically.
The prescribed PIER form asks for an election; it does not require a substantive rebuttal of each international objection or an admission that the international analysis is correct. See PIER Reply Form, supra, at 1. Counsel can evaluate whether the opinion addressed an earlier claim set, whether amendments have changed the relevant limitations, and whether the cited disclosures support the examiner's reasoning. Where a limitation offers a sound distinction and preserves commercially useful scope, an amendment may improve the application before substantive examination. Where the existing claims remain supportable, the election alone supplies no reason to surrender scope.
Any amendment remains subject to the ordinary preliminary-amendment rules, including the possibility of disapproval if it would unduly interfere with preparation of an Office action. 37 C.F.R. § 1.115. Coordination matters: counsel should consider the amendment together with the PIER election and avoid piecemeal submissions without assessing their procedural consequences.
The prior-art record also warrants attention. In a national-stage application, examiners consider ISR-cited U.S. patent documents available in the electronic file and other cited documents when the required copies are present as reflected in Form PCT/DO/EO/903. A separate listing is not invariably necessary for consideration. Printing the citations on the resulting patent is a separate question, for which an appropriate IDS provides a dependable record. MPEP §§ 609.03, 609.06; 37 C.F.R. §§ 1.97–.98. This national-stage practice should not be assumed to govern a bypass continuation: the MPEP separately calls for an IDS to ensure consideration of international-phase references in that continuing application. MPEP § 609.02(I).
Understanding the Patent Term Consequences
The first consequence for patent term adjustment (PTA) arises from issuance of the requirement itself. For an international application, the statutory fourteen-month initial-action period runs from commencement of the national stage. 35 U.S.C. § 154(b)(1)(A)(i)(II); 37 C.F.R. § 1.703(a)(1). The PIER notice states that mailing the requirement satisfies that initial-action obligation. PIER Notice, 91 Fed. Reg. at 17,951. The MPEP likewise recognizes § 1.105 requirements as § 132 notifications for PTA purposes. MPEP § 2731(I)(A).
Accordingly, a PIER requirement can end the initial-action delay period before the applicant receives a substantive examination of the claims. It does not erase delay already accrued under that provision, and its issuance does not decide every other potential ground for adjustment. Counsel should distinguish the date of the first qualifying notification from the date of the first action on the merits when evaluating the prosecution history. See 35 U.S.C. § 154(b)(1)(A)–(C); 37 C.F.R. § 1.703(a), (f).
A complete reply electing to proceed with examination also brings the ordinary four-month Office-response period into the analysis. Applying the general PTA rules, further A-delay may accrue if the Office does not mail a qualifying action or notice of allowance within four months after that reply, subject to applicable limitations and reductions. See 35 U.S.C. § 154(b)(1)(A)(ii); 37 C.F.R. § 1.703(a)(2); MPEP §§ 704.12(c), 2731(I)(B). This is a consequence of the ordinary PTA framework, rather than a separate PIER promise of substantive examination within four months.
The second consequence follows from requesting deferral. The form expressly acknowledges that the twelve-month period is treated as applicant delay under § 154(b)(2)(C) and § 1.704(c). PIER Reply Form, supra, at 1. That period reduces otherwise available PTA, but does not necessarily move the patent's expiration date earlier by a full year. The ultimate calculation accounts for the available Office delay, applicant delay, and applicable overlap rules. See 35 U.S.C. § 154(b)(2)(A), (C); 37 C.F.R. §§ 1.703(f), 1.704(a), (c).
Deferral can also affect the practical value of the patent apart from PTA. For a patent issuing from a national-stage application, the ordinary twenty-year term generally runs from the international filing date or an earlier qualifying nonprovisional filing date, while the term of granted rights begins at issuance. Foreign priority and provisional benefit ordinarily do not start that twenty-year calculation. A PIER deferral does not restart it. If deferral postpones issuance without a corresponding extension of the expiration date, the applicant will have less time after grant to exercise the patent rights, even if there is no positive PTA to lose. See 35 U.S.C. § 154(a)(2)–(3); MPEP § 2701(I)–(IV). The eventual difference in issuance dates need not equal the twelve-month deferral.
The third consequence concerns response timing. Section 1.704(b) generally measures applicant delay beginning after three months, even where the Office sets a shorter response period. A response filed during the third month can therefore require an extension fee without generating this particular deduction. For example, a complete reply filed two months and twenty days after mailing would require the appropriate extension, but would precede the three-month PTA threshold. A reply after three months would implicate that threshold even if timely under an extension. See 37 C.F.R. §§ 1.136(a), 1.704(b); MPEP § 2732(II).
These are distinct timing rules. The election to defer, the time taken to answer the requirement, and the mailing of the requirement itself affect different parts of the analysis. Defective replies and later supplemental papers can also implicate ordinary PTA provisions, so filing strategy should account for the complete record. See 37 C.F.R. § 1.704(c)(7)–(8).
Evaluating the Pilot
PIER presents a plausible opportunity to concentrate examination effort on applications that applicants still wish to pursue. An early review may identify claims worth improving or an application that no longer serves a business purpose. The USPTO has stated that it will evaluate applicant decision-making, application inventory, and examination quality and efficiency. Implementation Announcement, supra.
The notice anticipates participant feedback and states that, as applicable, the Office will follow GAO's leading practices for effective pilot design. PIER Notice, 91 Fed. Reg. at 17,952. Those practices call for measurable objectives, a stated assessment method and data-collection strategy, an evaluation plan, attention to scalability, and stakeholder communication. U.S. Gov't Accountability Off., GAO-16-438, Data Act: Section 5 Pilot Design Issues Need to Be Addressed to Meet Goal of Reducing Recipient Reporting Burden 5–6 (2016), https://www.gao.gov/assets/gao-16-438.pdf. The Office's stated framework thus provides a basis for evaluating both the benefits and burdens of PIER.
The evaluation should also account for costs created by the new procedure. Reporting a notice, obtaining instructions through foreign associates, reviewing the international record, and preparing a response all require professional time. A useful study would compare those costs with any reduction in substantive prosecution expense and account for delayed access to granted rights. A short form can still generate substantial coordination work across a portfolio.
Selection transparency would improve that evaluation. The announced approach accounts for application age, technology-area pendency, expected docketing, and X/Y citations. Implementation Announcement, supra. Differences between selected applications and the general application population could therefore reflect those characteristics. Publishing aggregate selection data would help explain the population being studied without disclosing confidential application contents. A useful evaluation would compare selected applications with otherwise comparable eligible applications that were not selected, accounting for age, technology area, anticipated docketing, and international-search results. It should follow the entire selected group, including applications that proceed, defer, or become abandoned. Restricting the analysis to applications that proceed would omit dispositions the pilot is designed to influence.
The evaluation should distinguish express abandonment following an informed decision from abandonment caused by failure to submit a timely or complete reply. It should also distinguish deferral followed by resumed prosecution from deferral followed by abandonment. These outcomes have different implications for whether the pilot improves applicant decisions or merely changes application inventory. A missed deadline does not itself establish that an application lacked commercial value. Following each course through its outcome would provide a more reliable measure of the pilot's effects.
Measures of success should track substantive examination as well as inventory. Delaying an application changes when the Office examines it; abandonment removes it from the pending population. Neither event alone demonstrates that an examiner can reach a sound patentability determination more efficiently. The evaluation should therefore track first actions on the merits, subsequent prosecution work, outcomes after deferral, and applicant costs. Those measures would support a more useful decision about whether and how to expand the program.
The separate Applicant Pre-Docketing Notice pilot offers a useful policy comparison. Announced on May 29, 2026, it provides an informational notice approximately three months before expected examiner docketing. It encourages applicants to update the record, submit appropriate amendments or IDS materials, and consider abandonment when protection is no longer desired. No response is required, and an application proceeds toward examination if the applicant takes no action. U.S. Pat. & Trademark Off., Applicant Pre-Docketing Notice Pilot Program (May 29, 2026), https://www.uspto.gov/subscription-center/2026/applicant-pre-docketing-notice-pilot-program.
That alternative raises a focused question about PIER: how much additional benefit comes from making the prosecution election compulsory? Advance notice alone may prompt useful review. PIER adds a mandatory reply, a focus on international work products, and a fixed deferral option. The Office should assess the contribution of those features while accounting for differences in the pilots' populations, timing, and incentives. The two groups should not be treated as interchangeable controls. The comparison instead identifies policy choices that can be evaluated before broader adoption.
A Practical Response Framework
For practitioners, the immediate task is to connect the required election with the client's prosecution objectives. A reporting letter should identify the deadline, explain the available choices, and make the binding nature of deferral explicit. Where instructions pass through a foreign associate, the report should clearly identify what requires the applicant's decision and what counsel can evaluate from the existing record.
The substantive review should address the current claims and commercial objectives, then determine whether a supported claim amendment or an information disclosure statement is appropriate. The filing should reflect the client's authorized election, satisfy the prescribed form requirements, and be checked for proper entry. If deferral is approved, the firm should retain the approval and docket the end of the period alongside any business milestones that informed the decision.
PIER can provide a useful occasion to reassess an application before examination. Its value to a particular applicant depends on the need for timely rights, the strength and scope of the claims, and the cost of further prosecution. A prompt, informed response preserves the applicant's chosen course while addressing the patent-term consequences that accompany it. Broader adoption should depend on evidence that the program improves prosecution decisions and examination efficiency after accounting for the costs imposed on applicants.
