USPTO Announces new PIER Pilot Program

Maier & Maier

The USPTO announced a new PCT Informed Examination Request (PIER) pilot program for 371 national stage applications.

Under this pilot PIER program, the USPTO will issue a requirement for information (PIER RFI) in selected 371 applications. The USPTO will not accept requests to opt out of the PIER pilot program.

The PIER RFI will require the applicant to respond by requesting one of: (1) proceeding with examination; (2) a 12-month delay in examination; or (3) the express abandonment of the application. The response to the PIER RFI must be filed using a new USPTO form: the PTO/SB/478.

The USPTO considers the PIER RFI to be an Office action under 35 U.S.C. § 132, meaning that it satisfies the 14-month patent term adjustment (PTA) time frame. While not stated, this also means that the applicant’s response to a PIER RFI is a reply for purposes of the first 4-month PTA time frame.

Proceeding with Examination: The request to proceed with examination may be accompanied by a preliminary amendment. A preliminary amendment may be desirable in view of the PCT International Search Report (ISR), Written Opinion, and any Supplemental International Search (SIS) or International Preliminary Examination Report (IPER).

A 12-month Delay: The request for a 12-month delay will result in a “non-terminable” delay in examination. The 12-month period will be measured from the USPTO’s receipt of the applicant’s response requesting the delay. This response will be considered an applicant delay for PTA purposes.

Express Abandonment: There is also an option to request express abandonment. The benefit of filing this response appears to be questionable since (1) any 371 application is likely to have been published during the PCT international stage, (2) the USPTO indicates that it will not refund any search or examination fees for an application expressly abandoned in response to the PIER RFI, and (3) the USPTO indicates that simply not responding to a PIER RFI will result in abandonment of the application.

The notice was published in today’s Federal Register at 91 Fed. Reg. 17949-52.

 

Adriene Lepiane Hanlon joins Maier & Maier

Maier & Maier

Maier & Maier PLLC is proud to announce its newest addition to the firm, Adriene Hanlon. Ms. Hanlon enjoyed a long and distinguished career at the USPTO, starting as an Examiner and ending with a long tenor as an Administrative Patent Judge (APJ) at the Patent Trial and Appeal Board (PTAB).

During her time as an APJ Ms. Hanlon authored over 1,700 decisions in ex parte appeals and wrote interlocutory and final decisions in numerous interferences. Ms. Hanlon provides unparalleled experience and expertise to patent matters and operations at the USPTO and PTAB allowing Maier & Maier to better serve our valued clients.

Maier & Maier is excited for a bright future with the addition of Ms. Hanlon to our team. To inquire about Ms. Hanlon’s services, please reach out to us at info@maierandmaier.com or 703-740-8322 for a consultation.

Maier & Maier Secures Victory on Appeal at the Federal Circuit

Maier & Maier

Maier & Maier is pleased to report that we secured a victory for our client Firstbeat Technologies OY in a case involving a heart rate measuring apparatus incorporated into wearable technology. The case was originally filed by Polar Electro OY in the District of Delaware on November 7, 2011, but was eventually transferred to the District of Utah where we obtained a grant of summary judgement of invalidity on the basis of §101.

The Plaintiff then appealed the decision to the Federal Circuit where a three-judge panel upheld in full the District Courts grant of summary judgement, issuing a rule 36 affirmance in record time. See 2024-1801, Dkt. 38.

Maier & Maier continues to enjoy consistent and favorable results in its litigation matters. The firm has obtained favorable results when defending clients accused of infringement by competitors as well as cases brought by patent assertion entities.

About Maier & Maier PLLC

Maier & Maier’s litigation team has been hard at work delivering positive results for clients. The Maier & Maier Team continues to advocate on behalf of clients in federal courts, before the Patent Trial and Appeal Board, Trademark Trial and Appeal Board, and the International Trade Commission.

Note on Revision to Rules of Practice before the Patent Trial and Appeal Board

Maier & Maier

On October 17, 2025, the United States Patent and Trademark Office posted proposed revisions to the rules of practice before the Patent Trial and Appeal Board. See  https://www.govinfo.gov/app/details/FR-2025-10-17/2025-19580. Time for comment closes November 17, 2025.

The Proposed Rules would change which patents are subject to inter partes review and limit the ability of patent challengers to invalidate patents. The USPTO states that the goals of the Proposed Rules are to:

  • Curb serial and parallel patent validity challenges.
  • Focus IPRs on patents not previously tested in court or other USPTO proceedings.
  • Enhance fairness, efficiency, and predictability in the patent system.

The USPTO believes that multiple or duplicative challenges erode confidence in patent reliability, increase costs, and discourage investment, especially by small and medium-sized innovators. The idea is that IPRs were designed as a substitute for litigation, not an additional layer. The Proposed Rules aim to reduce redundant reviews, increase finality of patent rights, and allocate PTAB resources toward ex parte appeals and initial examination quality.

The below is a brief summary of the changes introduced by the Proposed Rules.

Key Proposed Rule Changes (37 CFR §42.108)

  1. Required Stipulation (§42.108(d))
    • IPRs will not be instituted unless the petitioner stipulates that it (and any party in interest or privy) will not pursue invalidity challenges under §§102 or 103 in district court or the ITC regarding the same patent.
    • The stipulation must be filed in all relevant venues.
  2. Claims Found Valid in Prior Proceedings (§42.108(e))
    • IPR will not be instituted for claims previously upheld as valid (or “not unpatentable”) by:
      • A district court (after trial or summary judgment);
      • The ITC;
      • The PTAB (in prior IPRs or ex parte reexaminations); or
      • Affirmed by the Federal Circuit after reversal of an invalidity finding.
  3. Parallel Litigation (§42.108(f))
    • No IPR will be instituted if a district court trial, ITC determination, or PTAB final written decision on the same claims is likely before the PTAB’s final written decision deadline.
  4. Extraordinary Circumstances (§42.108(g))
    • The Director may personally authorize IPR institution despite the above restrictions only in extraordinary cases, e.g.:
      • Prior challenges brought in bad faith, or
      • Major statutory or Supreme Court changes affecting validity law.
    • “Extraordinary” does not include new prior art, new expert testimony, or failure to appeal prior decisions.

Takeaway

The Proposed Rules indicate that the USPTO will continue to strengthen patent rights under the direction of new director John A. Squires. Combined with the rise in discretionary denials, the Proposed Rules would further limit defendants’ abilities to invalidate asserted patents. If the Proposed Rules take effect, defendants will need to better coordinate their invalidity strategies, as patents could become “IPR proof” if a prior validity challenge fails.

Upcoming Webinar – Cutting USPTO Pendency at the Source – Front-End AI for Faster, Stronger Filings

Maier & Maier

On Tuesday October 7, 2025, at 12 PM ET Maier & Maier Partner and former Deputy Commissioner for Patent Examination Policy at the USPTO Bob Bahr will be a commentator on a Webinar hosted by Gene Quinn of IPWatchDog to discuss pendency at the USPTO.

Patent pendency at the United States Patent and Trademark Office (USPTO) is a problem. As of January, the number of unexamined applications reached a staggering and historic high, with 837,928 applications unexamined and nearly 1.2 million applications pending overall. As of August, the USPTO has been able to reduce the number of unexamined applications to 800,559, which is a great improvement, but much work remains to be done.

USPTO pendency isn’t just a back-end prosecution problem—it starts at the very first touchpoints of the innovation process. Small, AI-assisted changes to invention capture, prior-art triage, and claim strategy can help, and are becoming a necessity as the USPTO continues to implement AI solutions themselves.

Tune in on Tuesday, October 7, at 12 PM ET, for a conversation about how effective use of AI tools can reduce Office actions, avoid §101/§102/§103/§112 pitfalls, and accelerate filing paths. Find more info at Webinar: Cutting USPTO Pendency at the Source – Front-End AI for Faster, Stronger Filings – IPWatchdog.com | Patents & Intellectual Property Law

Kathleen Cooney-Porter returns to USPTO as Senior Trademark Advisor

Maier & Maier

            Kathleen Cooney-Porter has announced her return to the USPTO to serve as a senior trademark advisor Under Secretary and Director of The United States Patent and Trademark Office. Ms. Cooney-Porter is an expert in trademark matters having previously worked both at the USPTO as a trademark examiner and senior law advisor as well as in private practice at both law firms and as a consultant. Maier & Maier thanks her for her time as a partner and wishes her well at her new role.

Maier & Maier recognized by Chambers USA in 2025 List

Maier & Maier

We are pleased to announce that Maier & Maier has been recognized by Chambers USA, the premier legal guide known for ranking top law firms and attorneys nationwide.  
 
In the 2025 edition, Maier & Maier was recognized for our work in the Intellectual Property field. Our inclusion in Chambers USA is an honor to Maier & Maier and is a testament to our commitment to delivering superior legal counsel in intellectual property matters.
 
Chambers USA rankings are based on independent research and interviews with clients and peers, evaluating firms on their technical legal ability, client service, depth of team, and market reputation.

USPTO Institutes plan to accelerate patent issuance

Maier & Maier

Initially announced in a news brief, beginning next week on May 13, 2025, the U.S. Patent and Trademark Office (USPTO) will be accelerating the Issue Dates for patents. Previously, the time between Issue Notification and Issue Date averaged around three weeks. The USPTO is reducing that time to approximately two weeks, allowing patent holders to bring their investments to the market earlier.

 

Previously the USPTO required time between grant and issuance in order to format and print the patent, however as the Office has now switched to publishing electronic grants (eGrants) via their online platform Patent Center this is no longer necessary. Additionally, the USPTO indicated further time is saved by eliminating redundancies in the process.

 

By shortening the wait time between the Issue Notification and the Issue Date, Applicants may avoid the need to file a Quick Path Information Disclosure Statement, and the prompter patent issuance will provide earlier protection for inventions. The change also reduces the lame duck period where the inventors and attorneys still have a duty to submit known prior art but where such submission might delay issuance. Further information about  eGrants, Patent Center, and other USPTO modernization efforts can be found on the USPTO website.

 

Maier & Maier provides experienced IP counsel who can help with patent filings and strategies based on the newest trends and the ever-changing landscape of the USPTO.

Maier & Maier congratulates Partner Stephen Kunin on his recognition in the IAM Strategy 300 Global Leaders 2025

Maier & Maier

We are thrilled to announce that Stephen Kunin, one of the partners at Maier & Maier, has been recognized as one of the IAM Strategy 300 Global Leaders 2025. This prestigious award highlights Stephen’s exceptional expertise and leadership in the intellectual property (IP) field.

A slot in the 300 is the mark of a professional whose approach to intellectual property is regarded by peers as truly strategic in nature. The list features individuals from all kinds of entities that are selected for their skill, contribution and success – whether service providers, corporations, research institutions or universities. The selection process involves thousands of nominations, interviews, and in-depth evaluations conducted by IAM’s research team over several months, making this recognition an extraordinary achievement.

Stephen’s wealth of knowledge and ability to innovate serve as a boon not just to Maier & Maier but to the broader IP community. Once again we congratulate Stephen on his achievement, To explore more about the IAM Strategy 300 Global Leaders 2025, visit the IAM website.

USPTO formally terminates Climate Change Mitigation Pilot Program

Maier & Maier

On April 17, 2025, the USPTO formally announced the termination of the Climate Change Mitigation Pilot Program. The Climate Change Mitigation Pilot Program was launched in June 2022 as a replacement to the Green Technology program and allowed for applications involving technologies that reduce, remove, prevent, and/or monitor greenhouse gas emissions to be made special (advanced out of term for examination).

The program was initially scheduled to run until June 7, 2027, or until 4,000 applications had been granted special status under the program. The program was first suspended on January 28, 2025, and then formally terminated April 17, 2025. A press release by the USPTO stated that “(t)erminating the program allows us to dedicate our resources to reducing pendency across all applications, regardless of the technology to which the application is directed”. You can find more information in the Federal Register Notice.