USPTO PIER Pilot Program: What PCT Applicants Must Know

On April 9, 2025, the USPTO published a new pilot program in the Federal Register: the PCT Informed Examination Request (PIER) Pilot. For Chinese applicants and their US practitioners handling PCT national-phase portfolios, this program introduces a mandatory decision point that deserves careful attention — particularly around its PTA implications and the non-terminable nature of the 12-month delay option.

Scope: Who Is Affected

The PIER Pilot applies exclusively to applications entering the US national phase under 35 U.S.C. § 371 — the PCT pathway. It does not apply to:

Domestic US applications filed under § 111(a)
Design patent applications
Any application that did not enter through the PCT route

For Chinese enterprises and prosecution firms with substantial PCT-to-US portfolios, this pilot will affect a meaningful portion of incoming cases. The USPTO selects which applications are pulled into the program — applicants cannot opt in or request exclusion.

The Mechanics: What USPTO Will Send

When a PCT national-phase application is selected, the USPTO will issue an Information Requirement — a formal communication under 35 U.S.C. § 132. This is a critical classification: it is legally an official Office action, not a mere administrative notice.

The premise is straightforward. A PCT application entering the US national phase typically comes with an International Search Report (ISR), a Written Opinion, and in some cases an International Preliminary Report on Patentability (IPRP). These documents represent a first-pass patentability assessment. USPTO's position is: since applicants already have this material, they should make an affirmative decision about how to proceed before the application enters the examination queue.

Applicants must respond using Form PTO/SB/478, submitted via Patent Center, within the standard two-month period — extendable to a maximum of six months under 37 CFR 1.136(a).

Non-Response = Deemed Abandonment

Failure to respond to the Information Requirement within the applicable period results in abandonment of the application. No exceptions. Calendar controls must treat the PIER Information Requirement with the same urgency as any other Office action deadline.

Three Response Options

Option 1

Proceed to Substantive Examination

The applicant elects to proceed normally. A preliminary amendment (filed contemporaneously) can be used to bring claims into better alignment with the ISR search results or Written Opinion before the application enters the examiner's queue. This is the default path for applicants confident in their claim scope and prosecution strategy.

Option 2

Delay Examination by 12 Months

The applicant requests a 12-month deferral of substantive examination. The stated rationale is to allow time to evaluate the invention's commercial potential or reconsider prosecution strategy in light of the PCT search results. No additional government fee is charged for the deferral itself.

However, this option carries meaningful consequences that practitioners must explain clearly to clients before electing it.

Option 3

Express Abandonment

If the ISR and Written Opinion suggest the application lacks commercial or legal value worth pursuing, the applicant may file an express abandonment to terminate the application and avoid ongoing prosecution costs. See important fee-refund limitation below.

PTA Implications of the 12-Month Delay: Read Carefully

The 12-month deferral option is the most consequential election in the PIER program, and its PTA mechanics are easy to misread. Three points require precise understanding:

1. The Delay Starts from Receipt, Not Approval

The 12-month delay period begins running from the date USPTO receives the applicant's deferral request — not the date USPTO acknowledges or approves it. This distinction matters for calendar management.

2. The 12 Months Are Non-Terminable

Once a deferral request is approved, the applicant has no mechanism to end it early. The application will not enter the examination queue until the full 12 months have elapsed, regardless of any change in the applicant's circumstances, market timing, or prosecution strategy. This is a hard lock-in.

3. The Delay Is Fully Charged Against the Applicant for PTA Purposes

Under USPTO's PTA framework, any applicant-caused delay reduces the patent term adjustment. The PIER deferral is treated as applicant-caused delay in its entirety. Additionally — and this is the more nuanced point — the USPTO takes the position that issuing the PIER Information Requirement satisfies its obligation to issue a first Office action within 14 months under 35 U.S.C. § 154(b)(1)(A). This means the 12-month delay generates no corresponding USPTO delay credit to offset it. The patent term cost is borne entirely by the applicant.

For a portfolio where patent term is commercially significant — pharmaceutical, medical device, or technology with a defined product lifecycle — the 12-month PIER deferral could represent a meaningful reduction in enforceable patent life. Clients should be informed before this option is elected.

Abandonment: The Fee-Refund Trap

Ordinarily, if an applicant abandons a US application before receiving a substantive first Office action, they may petition for a refund of the search fee and excess claim fees under 37 CFR 1.138(d). This is a useful cost-recovery tool when prosecution is discontinued early.

Under PIER, this path is closed. Because the Information Requirement is classified as an official action under § 132, the USPTO treats it as equivalent to a substantive Office action for fee-refund purposes. Even if the applicant immediately elects abandonment upon receiving the PIER Information Requirement, no refund of previously paid search or excess claim fees is available.

Practice Note: Abandonment + Publication

If an applicant elects abandonment and also wishes to prevent the application from publishing, a separate petition under 37 CFR 1.138(c) must be filed. This petition must reach the USPTO no later than four weeks before the scheduled publication date. Given publication timelines, this window can be extremely tight — flag it immediately upon electing abandonment.

Signing Authority for Abandonment Declarations

One formality that practitioners frequently overlook: who has authority to sign an express abandonment under PIER.

Under 37 CFR 1.33(b)(1), an express abandonment must be signed by a patent practitioner of record — not merely a practitioner acting in a representative capacity. If the US attorney or agent currently on file is acting in a representative capacity (for example, filed the national-phase entry documents but has not been formally designated as practitioner of record), they do not have signing authority for the abandonment declaration unless they are simultaneously filing a continuing application.

This is not a technicality to be fixed after the fact: an abandonment signed by an unauthorized party is not an effective abandonment. Verify practitioner-of-record status before filing.

Context: Why USPTO Is Doing This

USPTO's pending application backlog has been growing steadily, with average total pendency now exceeding 24 months in many technology areas. Adding examiners addresses backlog only slowly and at significant cost. PIER represents a demand-side approach: by requiring applicants to affirmatively commit to prosecution at the point of national-phase entry, USPTO aims to shed cases from the examination queue that applicants themselves have lost confidence in.

For applicants, PIER functions as a formalized decision checkpoint. Many PCT-to-US filings proceed on autopilot through national-phase entry without a thorough re-evaluation of each case's value. PIER forces that conversation earlier — which is not necessarily a bad thing for portfolio management, provided the implications are understood.

Three Things Chinese Applicants Must Remember

Respond on time, using the correct form. Form PTO/SB/478 via Patent Center. Missing the deadline means abandonment with no recourse.
If electing the 12-month delay, understand the PTA cost. The delay is non-terminable once approved, starts from receipt of the request, and generates no USPTO-side PTA credit. For commercially sensitive portfolios, calculate the patent-term impact before electing.
If electing abandonment, confirm signing authority and publication timing. Verify practitioner-of-record status. If the application is approaching its publication date, act immediately — the 37 CFR 1.138(c) petition window is narrow.

Conclusion

The PIER Pilot is a relatively compact procedural mechanism, but it introduces decision points with disproportionate consequences — particularly the PTA impact of the 12-month deferral and the fee-refund preclusion upon abandonment. Practitioners handling PCT national-phase portfolios for Chinese applicants should update their docketing systems to flag PIER Information Requirements immediately upon receipt, and build a client communication protocol for explaining the three options and their tradeoffs before any election is made.

The pilot runs for 12 months from its publication date. USPTO retains the right to extend, modify, or terminate it unilaterally. We will continue tracking developments as they emerge.