Tackling the Patent Backlog: The USPTO’s 2026 Examination Reform Initiatives

As of January 20, 2025, there were a record 837,928 unexamined U.S. patent applications, following an increase of 261,825 unexamined applications from 2020 to January 2025 even as annual filings declined by more than 8,000. Confronting this so-called “choking backlog,” Director John A. Squires, who was confirmed in September 2025, has prioritized reducing the USPTO’s backlog of patent applications, alongside deploying AI tools to improve patent quality and examination efficiency. Early results suggest momentum: for the first time in nearly a decade, the USPTO’s cumulative output surpassed cumulative filings within a fiscal year, and as of April 6, 2026, the inventory of unexamined patent applications dropped to a two-year low of 776,995, down from the high of 837,928 in January 2025.

To obtain his goals, Director Squires has implemented aggressive policy shifts and targeted initiatives.  Director Squires has stated that all three trends now correlate in the right direction.

Overview of New Initiatives including PIER Pilot Program, APDN, and Show-Cause Orders

The PIER Pilot Program: Aligning U.S. Practice with Global Standards

Initiated on May 21, 2026 (following a Federal Register notice on April 9, 2026), the PCT Informed Examination Request (PIER) pilot program represents a major structural shift. In many international patent offices, applicants must formally request substantive examination and pay a corresponding fee after entering the national phase, providing a natural checkpoint to evaluate commercial viability. Historically, U.S. national stage applications entered the examination queue automatically. The PIER program introduces an active “confirm-to-proceed” mechanism that forces selected applicants to make explicit prosecution and commercialization decisions prior to the commencement of substantive U.S. examination.

Discretionary Selection and Eligibility Criteria

• Sole USPTO Discretion: Participation is conducted entirely at the discretion of the USPTO. Applicants cannot petition to participate, nor can they request to abstain or be removed once selected.
• Eligible Inventory: Strictly limited to international applications that have entered the U.S. national stage under 35 U.S.C. 371 and completed pre-examination processing. Bypass continuations (35 U.S.C. 111(a)), design, plant, reissue applications, and Hague Agreement international registrations are entirely excluded.
• Targeting High-Pendency Areas: The agency focuses on high-pendency technology areas projected to reach an examiner within 5 to 6 months. Selection heavily favors applications where international work products (ISR or WO/ISA) cite at least one prior art reference designated with an “X” or “Y” relevancy classification (indicating potential deficits in novelty or inventive step).

The Requirement for Information and Response Mandates

Upon selection, the USPTO issues a Requirement for Information (RFI) under 37 CFR 1.105 (Form PTO-2357, document code PIER.RFI). Although the RFI is an official Office action under 35 U.S.C. 132, the USPTO explicitly notes that it is not a first action on the merits. The mailing of the RFI triggers a strict two-month response window, extendable up to a total of six months under 37 CFR 1.136(a) upon payment of standard extension fees.

To avoid immediate abandonment, the applicant must submit a timely and complete response using the mandatory USPTO Form PTO/SB/478, selecting exactly one of three mutually exclusive options:

1. Proceed with Examination: The application immediately progresses toward examiner docketing. Impact: When actively deciding to proceed, the applicant may voluntarily file a preliminary amendment to place claims in better condition.
2. Delay Examination for 12 Months: Substantive examination is deferred for a non-terminable 12-month period from receipt. Impact: Legally treated as a failure to engage in reasonable efforts to conclude prosecution under 35 U.S.C. 154(b)(2)(C) and 37 CFR 1.704(c), resulting in a day-for-day reduction in accumulated PTA.
3. Expressly Abandon the Application: The application is formally abandoned under 37 CFR 1.138. Impact: Because the RFI is an official action under 35 U.S.C. 132, the applicant is ineligible for search and excess claims fee refunds under 37 CFR 1.138(d).

Administrative Pitfalls and Inaction Consequences

The PIER program leaves no room for administrative oversight. Failure to respond correctly results in immediate abandonment, and revival under the “unintentional” standard of 37 CFR 1.137 is exceptionally difficult.

• The Signature Trap: Under 37 CFR 1.138(b), a registered patent practitioner acting in a representative capacity lacks the authority to sign an express abandonment unless filing a concurrent continuing application. Selecting express abandonment without a continuation filing or an explicit Power of Attorney (POA) will render the response non-compliant.

PTA Effect

Because the RFI constitutes an official action under § 132, its issuance will halt the running of the 14-month A-Delay clock that otherwise limits USPTO-caused delays and accrues Patent Term Adjustment in the applicant’s favor.  Conversely, if the applicant fails to respond in a timely manner or affirmatively elects to delay examination, the program may result in an increase in applicant-caused delays for purposes of patent term adjustment, thereby reducing the applicant’s accumulated PTA on a day-for-day basis.  As a result, these PTA effects operate advantageously for the USPTO’s internal PTA metrics while proving potentially disadvantageous to the applicant’s accumulated PTA.

The Applicant Pre-Docketing Notice (APDN) Pilot Program

Announced on May 29, 2026, the Applicant “Pre-Docketing Notice” (APDN) pilot program is another initiative designed to encourage applicants to refine their applications prior to examiner review. Under the APDN program, the USPTO issues an informational “Pre-Docketing Notice” in pending nonprovisional utility patent applications approximately three months before the application is expected to be docketed to an examiner.

Unlike the PIER program, no response to the APDN notice is required, and applications proceed to examination in the normal course if the applicant takes no action. The APDN notice serves as a strategic reminder to verify application data, record assignments, file preliminary amendments, or submit outstanding Information Disclosure Statements (IDS). Crucially, because the APDN notice is purely informational and is not classified as an official Office action under 35 U.S.C. 132, applicants who choose to file an express abandonment in response to an APDN notice can secure a refund of their search fees and excess claims fees under 37 CFR 1.138(d).

Zero-Term Show-Cause Orders

Enacted on June 4, 2026, the USPTO announced a policy of issuing show-cause orders for pending applications that, if issued, would yield patents with zero remaining patent term. Grounded in the Federal Circuit’s precedential ruling in In re Forest, 134 F.4th 1198 (Fed. Cir. 2025), which limited provisional patent rights to patents issuing with an active term, these show-cause orders force applicants to justify the ongoing expense of prosecuting applications that cannot provide any actual term of exclusivity. Failure to respond adequately results in the application being abandoned.

Zero-term patents would come from applications in which the statutory 20-year term measured from the earliest effective filing date has elapsed, or will elapse, before the application can issue as a patent. Because a patent is granted a term beginning on the date the patent issues and ending twenty years from the application or applicable priority date, an applicant whose patent would issue only after that term expired would never receive any exclusionary rights. In In re Forest, the Court clarified that provisional rights only arise once a patent issues and crucially do not extend beyond the statutory patent term, so that an applicant seeking a patent that would confer no enforceable rights-either exclusionary or provisional-lacked standing to pursue it. Reasoning that provisional rights are “provisional,” meaning temporary, and must be replaced by the statutory exclusionary rights that run from the date of issuance to 20 years after the priority date, the Court held that a patent is granted exclusionary rights only if it issues before its expiration date, and that provisional rights can therefore be granted only to a patent that issues with exclusionary rights.

According to the USPTO’s June 4, 2026 announcement, the USPTO will issue show-cause orders for pending applications that would issue without any remaining patent term and require the applicant to file a timely written response affirmatively showing cause why prosecution should continue despite the lack of any enforceable term. These show-cause orders compel applicants to demonstrate a valid reason for continuing to incur prosecution costs on applications incapable of yielding any enforceable period of exclusivity.

Consistent with the USPTO’s established show-cause practice, the order will detail the basis for the action and require the party to respond by a specified date to explain why the USPTO should not take the proposed action. The response window is a strict, non-extendable two-month period running from the mailing date of the order, and the response must set forth a reasoned justification for continued prosecution. Failure to file a timely and adequate response results in the application being deemed abandoned or the proceeding being dismissed with prejudice.

Procedural Comparison

Strategic Recommendations for Corporate Intellectual Property Portfolios

1. Reevaluate 35 U.S.C. 371 Entries vs. Bypass Continuations: For high-value assets such as life sciences or tech assets where Patent Term Adjustment (PTA) is critical, consider filing bypass continuations under 35 U.S.C. 111(a) to completely insulate applications from discretionary PIER selection and day-for-day PTA penalties.
2. Implement Rigorous Docket Controls and POA Audits: Establish strict docket flags for all 371 national stage entries to catch potential PIER RFIs. Ensure valid, executed Powers of Attorney are on file immediately to empower representatives to act within the tight two-month window.
3. Integrate APDN Notices into Pruning Workflows: Utilize informational APDN notices to evaluate portfolio commercial viability. File timely express abandonments under APDN windows to secure partial search fee refunds—an option entirely blocked under PIER RFIs.

Conclusion

If successful, the new programs may offer new options and benefits for the patent office and filers.  However, to avoid administrative pitfalls that may block paths to obtain patent protection, applicants must understand and meticulously follow the new administrative requirements when appropriate.