USPTO Launches Streamlined Claim Set Pilot Program: An Opportunity for Expedited Examination
The United States Patent and Trademark Office (USPTO) announced last week the launch of its Streamlined Claim Set Pilot Program, a targeted initiative designed to evaluate how limiting the number of claims under examination affects both pendency and examination quality. This program, which began accepting petitions today, on October 27, 2025, represents a strategic effort by the USPTO to reduce its backlog of unexamined patent applications while providing applicants with an attractive pathway to expedited examination at a modest cost.
According to Director John A. Squires, "Narrowly crafted claim sets empower examiners to dive deeper, faster. When applicants streamline their claims, they become collaborators in reducing backlog, trading extra claims for expedited feedback, and we gain the bandwidth to resolve more cases more quickly". This philosophy undergirds the program's structure and highlights the mutual benefits available to both the Office and applicants willing to embrace a more focused claiming strategy.
Program Structure and Duration
The pilot program will run for twelve months from October 27, 2025, or until each Technology Center that examines utility applications has accepted approximately 200 applications into the program, whichever occurs first. Importantly, the USPTO has reserved the right to terminate the program early at its sole discretion, based on factors such as workload demands, available resources, public feedback, and program effectiveness. Applications accepted into the program will receive "special status" and be advanced out of turn for their first Office Action. However, this expedited treatment applies only until issuance of that initial examination communication.
The USPTO has committed to transparency throughout the pilot's operation, indicating it will publish on its website the total number of petitions filed and applications accepted into the program for each Technology Center.
Eligibility Requirements
Participation in the Streamlined Claim Set Pilot Program is subject to several threshold requirements that applicants must carefully evaluate before filing a petition.
Application Type and Filing Date
The program is available exclusively for original (non-reissue), noncontinuing utility applications filed under 35 U.S.C. § 111(a) with an actual filing date before October 27, 2025. Applications claiming the benefit under 35 U.S.C. §§ 120, 121, 365(c), or 386(c) to a prior-filed nonprovisional U.S. application or international application designating the United States are ineligible. Continuation, divisional, and continuation-in-part applications, therefore, cannot participate, nor can national stage applications filed under 35 U.S.C. § 371.
Significantly, however, claiming the benefit under 35 U.S.C. § 119(e) of one or more prior provisional applications or claiming priority under 35 U.S.C. § 119(a)-(d) or (f) to foreign applications does not affect eligibility. This distinction provides applicants who filed provisional applications or foreign priority applications with access to the program while excluding those pursuing traditional continuation practice.
Timing Constraints
A Petition to Make Special must be filed before issuance of a first Office Action, including any written restriction requirement. Critically, applicants should not file a petition if the application has already been docketed to an examiner, as the USPTO will generally dismiss such petitions. The Federal Register notice explains that because preparation of a first Office Action may begin soon after an application is docketed to an examiner, the timing of petition filing is crucial. This requirement places a premium on monitoring application status and acting promptly once an application enters the examination queue, but before examiner assignment occurs.
Claim Set Limitations
At the heart of the program lies its streamlined claim set requirement. When the petition is filed, the application must contain no more than one independent claim, no more than ten total claims, and no multiple dependent claims. All dependent claims must comply with a specific dependency format outlined in the Federal Register notice.
To satisfy the dependency format requirements for this pilot program, each dependent claim must be in proper dependent form under 35 U.S.C. § 112(d), meaning it must refer to a previous claim, include every limitation of that previous claim, and then specify a further limitation of the subject matter claimed. Additionally, the reference to the previous claim must appear in the preamble, and the claim must be directed to the same statutory class of invention as the independent claim.
The Federal Register notice provides helpful examples to illustrate compliant and non-compliant claim formats. For instance, if independent claim 1 recites "A widget comprising A and B," then a dependent claim reciting "The widget of claim 1 further comprising C" would comply with the format requirements. However, a claim reciting "A fastener for use in securing the widget of claim 1" would not comply because it fails to include all limitations of the previous claim. Similarly, a claim reciting "A device comprising the widget of claim 1 fastened to a gadget" would not comply because the reference to the previous claim does not appear in the preamble. A claim reciting "A method of producing the widget of claim 1" would not comply because it is directed to a different statutory class of invention than the independent claim.
Applicants may bring their applications into compliance with the claim requirements by filing a preliminary amendment before or with the Petition to Make Special in accordance with 37 C.F.R. § 1.121. The entry of such a preliminary amendment is not contingent upon the grant of the petition. However, preliminary amendments filed after the Petition to Make Special is filed will not be considered when deciding the petition. Notably, a preliminary amendment reducing the number of claims will not entitle an applicant to a refund of previously paid excess claims fees.
Additional Technical Requirements
Beyond claim limitations, the program imposes several technical filing requirements that reflect the USPTO's broader modernization initiatives.
First, the specification, claims, and abstract must have been filed in DOCX format in compliance with USPTO requirements at the time the application was filed. This requirement aligns with the USPTO's ongoing transition to DOCX filing, which began with the implementation of a surcharge for non-DOCX filings in January 2024.
Second, the Petition to Make Special must be filed electronically through the USPTO's Patent Center platform, and the underlying application must also have been filed using the Patent Center electronic filing system. The petition must be submitted using Form PTO/SB/472, titled "Certification and Petition to Make Special Under the Streamlined Claim Set Pilot Program," which contains the required certification statements and agreement for participation.
Third, if a nonpublication request exists in the application, the applicant must file a rescission of that request no later than the time the petition is filed, which may be accomplished using Form PTO/SB/36.
Inventor Filing Limitations
The program includes a novel limitation designed to prevent gaming or excessive use by serial filers. An applicant may file a petition to participate only if no inventor or joint inventor has been named as the inventor or joint inventor on more than three other nonprovisional patent applications in which a petition under this pilot program has been filed. Form PTO/SB/472 includes a certification statement to this effect. This restriction helps ensure broader access to the program across the applicant community rather than allowing a small number of prolific filers to consume available slots.
Petition Fee
The Petition to Make Special under the pilot program must be accompanied by the petition fee set forth in 37 C.F.R. § 1.17(h). According to the current USPTO fee schedule, effective September 1, 2025, this fee is $150 for a large entity, $60 for a small entity, and $30 for a micro entity. This represents a remarkably modest investment compared to the $4515/$1806/$903 fee required for Track One prioritized examination under 37 C.F.R. § 1.102(e).
The fee must be submitted appropriately as required by 37 C.F.R. § 1.102(d), and the petition must be properly signed. Importantly, the USPTO will not refund the petition fee if an application is not accepted into the pilot program, including situations where the petition is dismissed because the application has been docketed to an examiner at the time the petition is taken up for decision, even though it was filed before such docketing occurred.
Examination Process and Restrictions
Special Status and Docketing
Applications granted special status under the pilot program will be placed on an examiner's special docket until a first Office Action is issued. After issuance of the first Office Action, the application will no longer be treated as special during examination and will be entered into the examiner's regular docket. For example, if an amendment is filed after the first Office Action, it will be placed on the examiner's regular amended docket rather than receiving any priority treatment.
The USPTO will decide petitions once pre-examination processing of the application is completed. Meeting all requirements in the Federal Register notice does not guarantee acceptance into the program, as the USPTO will generally dismiss petitions if the application has already been docketed to an examiner at the time the petition is being reviewed for decision.
Claim Set Restrictions During Prosecution
If an application is granted special status under the program, the applicant must agree to comply with the claim requirements throughout the remainder of pendency. The examiner may refuse entry of any amendment that, if entered, would result in a set of pending claims with more than one independent claim, more than ten total claims, or a multiple dependent claim. The examiner may also refuse entry of any amendment that would result in a claim other than the independent claim being noncompliant with the specified dependency format.
The Federal Register notice provides specific procedures for handling non-responsive amendments. If a reply to a nonfinal Office Action is not fully responsive for failing to comply with the pilot program's claim requirements but is a bona fide attempt to advance the application to final action, the examiner may, at the examiner's discretion, provide a shortened statutory period of two months for the applicant to provide a fully responsive reply. Extensions of this time period under 37 C.F.R. § 1.136(a) will be permitted, but in no way can any extension carry the date for reply beyond the maximum period of six months set by statute under 35 U.S.C. § 133. Any further nonresponsive amendment typically will not be treated as bona fide, and the time period set in the prior notice will continue to run.
Restriction Practice
The USPTO anticipates fewer restriction requirements in pilot program applications due to the streamlined claim set requirements. However, if an examiner believes a restriction requirement is appropriate, including an election of species requirement, the examiner should attempt to contact the applicant in accordance with the telephone restriction practice procedure set forth in MPEP § 812.01. If the applicant does not make an election—for example, by failing to reply to a request for a telephonic interview within five business days of the examiner's request—the examiner will mail a written restriction requirement, and the application will no longer be treated as special. In such cases, the written restriction requirement would be considered the "first Office Action" for purposes of the pilot program.
Office Action Reply Periods and Post-Final Practice
The time periods set for reply in Office Actions for applications granted special status under the pilot program will be the same as those outlined in the Manual of Patent Examining Procedure (MPEP) § 710.02(b). A reply to an Office Action must be fully responsive to the rejections, objections, and requirements made by the examiner.
Any amendment, affidavit, or other evidence after a final Office Action and prior to an appeal must comply with 37 C.F.R. § 1.116. During the appeal process, the application will be treated in accordance with normal appeal procedures as outlined in MPEP Chapter 1200.
Proceedings Outside Normal Examination
If an application becomes involved in proceedings outside the normal examination process—such as a secrecy order, derivation proceeding, or petition under 37 C.F.R. §§ 1.181 through 1.183—the application will not be under special status during those proceedings. For example, while under a secrecy order, the application will be treated in accordance with normal secrecy order procedures and will not be in special status under the pilot program. Once the proceeding outside the normal examination process is completed, the application will continue in special status as described in the Federal Register notice.
No Withdrawal Provision
There is no provision for voluntary withdrawal from the pilot program. An applicant may abandon an application granted special status under the pilot program in favor of a continuing application, but such a continuing application will not be granted special status based on the petition filed in the parent application. Only noncontinuing applications are eligible for this pilot program.
Strategic Considerations
The Streamlined Claim Set Pilot Program presents both opportunities and constraints that warrant careful strategic analysis before participation.
Advantages
The program offers expedited examination at a fraction of the cost of Track One prioritized examination. At $150/$60/$30, the petition fee represents substantial savings compared to Track One's $4515/$1806/$903 fee. For applicants with applications filed before October 27, 2025, that have not yet been docketed to an examiner and for which the invention can be adequately protected with a focused claim set, the program provides an attractive option for accelerating time to first Office Action.
The streamlined claim set may offer prosecution benefits beyond mere speed. Examiners examining applications with one independent claim and up to nine dependent claims may be able to provide more focused and thorough examination than when faced with applications containing three independent claims and twenty total claims with complex multiple dependencies. This focused examination could potentially lead to higher quality prosecution and stronger issued patents.
Moreover, for applicants in technology areas where patent pendency has historically been lengthy, advancing to first Office Action may provide valuable early feedback on patentability that can inform subsequent filing strategy, continuation practice, or business decisions regarding product development and commercialization.
Limitations and Risks
The program's restrictions demand careful consideration of their impact on patent protection strategy.
First, the limitation to one independent claim and ten total claims may prove insufficient for inventions of significant scope or complexity. Many pharmaceutical and biotechnology inventions, for example, involve multiple distinct embodiments that are most appropriately claimed through multiple independent claims. An invention encompassing both a compound, pharmaceutical compositions comprising that compound, methods of using the compound therapeutically, and methods of manufacturing the compound would traditionally be claimed through separate independent claims directed to each category. Forcing such an invention into a single independent claim could result in inadequate protection or strategic disadvantages during prosecution.
Second, the restriction to noncontinuing applications means that continuation applications, which play a central role in biotechnology and pharmaceutical patent strategy for building patent portfolios and responding to evolving competitive landscapes, cannot benefit from the program. Similarly, national stage applications under 35 U.S.C. § 371 are ineligible, which may disadvantage applicants relying primarily on the Patent Cooperation Treaty route for U.S. filing.
Third, the requirement to maintain the streamlined claim set throughout prosecution, with examiners authorized to refuse entry of amendments that would exceed the claim limits, constrains prosecution flexibility. If examination reveals prior art requiring claim amendments that would benefit from additional independent claims or dependent claims to establish patentability, the applicant may face difficult strategic choices about whether to sacrifice claim coverage or forgo the benefit of expedited examination.
Fourth, the inventor filing limitation—restricting participation to inventors named on no more than three other applications in the program—may affect prolific inventors in biotechnology and pharmaceutical fields where multiple related applications are common.
Comparison to Alternative Expedited Examination Options
Applicants seeking expedited examination should consider how the Streamlined Claim Set Pilot Program compares to other available options.
Track One prioritized examination under 37 C.F.R. § 1.102(e) remains available and offers final disposition within approximately twelve months rather than merely expedited first Office Action. Track One allows up to four independent claims and thirty total claims, providing greater claim scope flexibility. However, Track One requires a significantly higher fee of $4515/$1806/$903 and is subject to an annual limit of 20,000 accepted requests as of October 1, 2025.
The Accelerated Examination program, which previously required performance of a pre-examination search and filing of an examination support document, was discontinued for utility applications effective July 10, 2025. The Streamlined Claim Set Pilot Program thus represents a simpler alternative without the burden of pre-examination search requirements.
Petitions to make special based on applicant's age (65 or older) or health remain available without fee but are limited to qualifying applicants. Similarly, Petitions to Make Special for inventions enhancing environmental quality, contributing to energy resource development or conservation, or contributing to countering terrorism remain available, though, since the discontinuation of the Accelerated Examination program for utility applications, the specific procedures and requirements for such petitions may need clarification.
The First-Time Filer Expedited Examination Pilot Program (First-Time Filer), which offered expedited first Office Action to qualifying first-time filers without petition fee, expired on March 11, 2025. The Streamlined Claim Set Pilot Program thus provides a new avenue for expedited examination for applicants who would not have qualified for the First-Time Filer program.
Key Takeaways
As patent practitioners evaluate whether to utilize the Streamlined Claim Set Pilot Program for pending applications, several essential points warrant emphasis:
1. Limited Window for Participation
Only applications filed before October 27, 2025, are eligible, and petitions must be filed before the application is docketed to an examiner and before any first Office Action. The program may terminate after twelve months or when each Technology Center has accepted approximately 200 applications, whichever occurs first. Given anticipated demand, applicants interested in the program should act expeditiously to evaluate eligible applications and file petitions.
2. Strict Eligibility Requirements
The program is available exclusively for original (non-reissue), noncontinuing utility applications filed under 35 U.S.C. § 111(a). Continuations, divisionals, continuation-in-part applications, and national stage applications are categorically ineligible. Applications claiming benefit to prior-filed provisional applications or foreign priority applications remain eligible. Still, any benefit claim to a prior-filed nonprovisional U.S. application or international application designating the United States renders the application ineligible.
3. Streamlined Claim Set is Mandatory and Enforceable
Applications must contain no more than one independent claim, no more than ten total claims, and no multiple dependent claims. All dependent claims must comply with specific format requirements including appearing in proper dependent form with the reference in the preamble and being directed to the same statutory class as the independent claim. These requirements continue throughout prosecution, and examiners may refuse entry of amendments that would violate them.
4. Preliminary Amendments Can Establish Compliance
Applicants may file preliminary amendments before or with the Petition to Make Special to bring applications into compliance with claim requirements. Such amendments enter regardless of whether the petition is granted, and applicants should ensure amendments are filed before or with the petition, as amendments filed afterward will not be considered in the petition decision.
5. Low Cost but No Refund
The petition fee under 37 C.F.R. § 1.17(h) is $150/$60/$30 for large/small/micro entities, representing significant savings compared to Track One prioritized examination at $4515/$1806/$903. However, the fee is not refundable if the application is not accepted into the program, including situations where the application is docketed to an examiner between the time the petition is filed and the time it is reviewed.
6. Expedited Treatment Limited to First Office Action
Applications accepted into the program receive special status only until issuance of the first Office Action. After the first Office Action, examination proceeds at normal pace. The program thus accelerates initial examination feedback but does not guarantee overall faster prosecution to allowance.
7. DOCX Filing Requirement
The specification, claims, and abstract must have been filed in DOCX format at the time of application filing. Applications filed in PDF format do not qualify, regardless of when they were filed. This requirement reflects the USPTO's broader transition to DOCX filing and applicants should ensure their filing format compliance before attempting to petition into the program.
8. Inventor Filing Limitation
No inventor or joint inventor may be named on more than three other nonprovisional applications in which a petition under this program has been filed. This limitation helps distribute program benefits broadly across the applicant community but may affect prolific inventors with multiple pending applications.
9. No Withdrawal Option
There is no provision for voluntary withdrawal from the program once accepted. Applicants should carefully evaluate whether the claim limitations are compatible with their prosecution strategy before filing a petition, as they will be bound by the streamlined claim set requirements throughout prosecution.
The Streamlined Claim Set Pilot Program represents a thoughtful experiment in balancing examination efficiency with applicant needs for timely feedback on patentability. For inventors and companies with focused inventions amenable to protection through a single independent claim and targeted dependent claims, the program offers an excellent opportunity to accelerate prosecution at modest cost. However, the program's restrictions demand careful strategic analysis to ensure compatibility with overall patent protection objectives, particularly in fields such as biotechnology and pharmaceuticals, where complex inventions, multiple embodiments, and continuation practice are common. Patent practitioners should promptly evaluate pending applications filed before October 27, 2025, that have not yet been docketed to examiners to determine whether the program's benefits outweigh its constraints for specific clients and inventions.
This post was written by Lisa Mueller.