Patent applicants are presently encountering long pendency periods, exceeding two years on the average, before the application is assigned to an examiner and begins its journey through the examination process.
The U.S. Patent and Trademark Office (USPTO) announced a new pilot program on October 27, 2025, to assess if limiting the number of claims impacts the pendency and examination quality for patent applications. Under this pilot program, certain pending utility patent applications filed before October 27, 2025, with no more than one independent claim and no more than 10 total claims may be eligible for expedited examination. With traditional total pendency at an unprecedented 26.3 months, the current initiative may benefit applicants meeting the requirements by expediting review. Further, the pilot program may provide guidance for future applicants on crafting claim sets that facilitate a speedy review, for at least the first application in the family.
The Current Problem With Pendency of Patent Applications
“Pendency” refers to the duration for which the patent application is pending or awaiting a decision. For fiscal year 2025, the average time for the USPTO to mail the first office action is as long as 26.3 months, a sharp increase from an average of 19.9 months for FY2024. The incoming director commented on pendency and backlog issues as a key challenge facing the agency. Long pendency periods impact innovation and commercialization, especially in rapidly moving technology areas such as artificial intelligence, as the timeline for approval may make the claimed technology less valuable to its owner. The USPTO has introduced several initiatives to reduce pendency, including focusing on issuing the first office action, setting up internal teams to strategize pendency improvements, and hiring and training examiners. However, pendency remains at an all-time high, and the current initiative takes a new approach by prioritizing the review of applications with a limited number of claims.
Pilot Program Requirements
To qualify, applications must meet eligibility requirements that are slanted toward short and limited claim sets:
- Only original non-reissue, noncontinuing utility applications filed under 35 U.S.C. § 111(a), with a filing date before the publication date of the notice in the Federal Register are eligible. National stage applications filed under 35 U.S.C. § 371 are not eligible.
- Applicants must further certify that “no inventor or joint inventor has been named as the inventor or a joint inventor on more than three other nonprovisional patent applications in which a petition to make special under this pilot program has been filed.”
- Applications must contain no more than one independent claim, no more than 10 total claims, and no multiple dependent claims; dependent claims must be in proper dependent form under 35 U.S.C. § 112(d). To qualify, each dependent claim must refer to a previous claim, include every limitation of the previous claim referred to, and then specify a further limitation of the subject matter of the prior claim. An applicant may comply with these claim requirements by filing a preliminary amendment before or with the petition to make special under the pilot program.
- The applicant must file Form PTO/SB/472, titled “Certification and Petition to Make Special Under the Streamlined Claim Set Pilot Program,” which includes certification statements and agreements required for participation in the pilot program, and information about the required fee. Petitions will be accepted for either 12 months from Monday, October 27, or until each technology center has docketed at least approximately 200 applications accepted into the pilot program, whichever occurs first. The petition to make special must be filed with the petition fee under 37 C.F.R. § 1.17(h) before the issuance of a first office action, including any written restriction requirement.
Takeaways for Patent Applicants
The ever-increasing patent pendency duration is a problem that has defied resolution, and this new initiative focused on limiting claim sets as a quid pro quo for expedited review may herald a new approach for the USPTO to resolve the backlog. For applicants, this is a new opportunity to expedite the review of pending applications at substantially lower costs than the current “Track One” prioritized exam process, where fees for a single application may exceed $4,000 for a large entity, in addition to non-refundable processing and publication fees.
Strategic considerations for patent applicants include:
- Examining pending applications to assess whether one or more applications qualify for the pilot program, and whether expedited review provides a commercial benefit.
- Only 200 applications will be accepted in each technology center. Thus, time is of the essence if the application is pending at a center with a higher volume of pending applications or has longer pendency, as it is probable that it will attract a proportionately higher number of applicants for the pilot program.
- The pilot program is likely more attractive for recently filed applications, as it would help circumvent a long wait period. In contrast, applications already in the queue and expecting examination soon may not benefit as much from the streamlined process.
