USPTO lowers threshold for requesting info in patent exams
USPTO lowers threshold for examiners to request extra applicant information in patent exams.
Why it matters: Patent attorneys must revise strategies as examiners can request more supplemental information earlier, affecting prosecution timelines and documentation. Legal tech tools will need updates to manage increased disclosure and new AI pilot integrations.
- USPTO reduced the examination threshold so examiners can request additional info when new material facts arise, increasing chances for supplemental disclosures.
- New fees for Information Disclosure Statements (IDS) start January 19, 2025, charging applicants submitting over 50 documents to offset examiner workload.
- The Artificial Intelligence Search Automated Pilot (ASAP) expanded in April 2024, accepting 3,200 applications to enhance prior art searches with AI.
- USPTO Director Kathi Vidal highlighted these moves aim to modernize patent examination and strengthen IP reliability.
The United States Patent and Trademark Office (USPTO) officially lowered the threshold that examiners use to request additional information from applicants during patent prosecution. The revised standard permits examiners to require supplemental information whenever a new material fact arises, increasing the frequency and timing of such requests.
Previously, examiners requested additional data based on a higher threshold tied to materiality; under the new rule, the standard focuses on whether the information is "material to patentability," effectively broadening examiners' scope. This change means applicants should expect earlier and more frequent demands for supporting documents or explanations during the examination process.
Complementing this procedural change, the USPTO announced a new fee structure for Information Disclosure Statements (IDS) starting January 19, 2025. Applicants submitting more than 50 references in an IDS will incur fees to help offset the growing examiner workload. This policy encourages applicants to limit submissions to the most pertinent prior art, as excessive filings will become costly.
On technology, the USPTO expanded the Artificial Intelligence Search Automated Pilot (ASAP) in April 2024. Now accepting up to 3,200 patent applications, ASAP employs AI tools to improve the accuracy and efficiency of prior art searches, reducing manual burdens on examiners. This expansion came earlier than initially projected and indicates growing integration of AI in patent prosecution.
USPTO Director Kathi Vidal stated these combined initiatives support the agency's broader mission to modernize the examination process and provide stronger, more reliable intellectual property rights for applicants, investors, and the public.
For patent prosecutors and corporate IP counsel, these changes mean revisiting prosecution workflows to accommodate potentially more frequent information requests and new IDS fees. Legal technology platforms supporting patent prosecution will also require updates to manage increased document volumes and integrate advanced AI search tools like ASAP.
By the numbers:
- 50+ documents — IDS fee applies starting January 19, 2025
- 3,200 applications — capacity of ASAP pilot as of April 2024