The United States Patent and Trademark Office (USPTO) has launched a pilot program introducing an informational “Pre-Docketing Notice” for pending utility nonprovisional patent applications. The program is designed to provide applicants with an advance opportunity to review application status and take preparatory steps before substantive examination begins.

What Is a Pre-Docketing Notice?

Under the pilot program, applicants will receive a Pre-Docketing Notice approximately three months before their application is expected to be assigned to an examiner. The notice serves as a reminder to review key application data and consider actions that may improve the efficiency and effectiveness of examination, including:

• verifying inventorship and ownership information;
• filing a preliminary amendment to clarify claims or address potential issues;
• submitting an information disclosure statement (IDS); and
• filing other documents that support a smoother examination.

The notice also provides an opportunity for applicants who no longer wish to pursue protection to file for express abandonment prior to examination. In certain circumstances, this may allow applicants to obtain a refund of the search fee and any excess claim fees under 37 CFR 1.138(d), where applicable.

The Pre-Docketing Notice does not require a response. Applications will proceed to examination in the ordinary course if no action is taken.

What This Means for You

When a Pre-Docketing Notice is issued in connection with a patent application, we recommend reviewing the application and considering whether a preparatory filing would strengthen your position before examination begins. Where applications are no longer commercially justified, this pre-docketing window may present an opportunity to reduce costs through express abandonment and potential fee recovery.

If you have any questions regarding this development or its potential impact on your pending applications, please contact your regular Armstrong Teasdale attorney or one of the listed authors.