By William A. Munck and Kyle Kasparek
The U.S. Patent and Trademark Office announced the Artificial Intelligence Search Automated Pilot, or “ASAP!”, a new program designed to deliver AI-assisted prior art search results to applicants shortly after filing utility applications. The program is part of the USPTO’s broader initiative to improve examination quality, reduce pendency, and potentially save applicants from fees.
What the Pilot Does
Under ASAP!, the USPTO will run an automated, internal AI search using information gleaned from an application’s specification, claims, abstract, and assignment under the Cooperative Patent Classification (CPC). The search will generate an AI-Assisted Search Results Notice (ASRN) that provides an early “top ten” list of potential prior art issues for the applicant’s consideration before substantive examination of the application by a human patent examiner. The Office will use the pilot to evaluate the scalability and quality impact of pre-examination AI searches and to inform future companion pilots.
Why It Matters
Early visibility into the most relevant prior art can materially influence strategy at the outset of prosecution. By determining likely prior art issues at a pre-examination stage, the pilot offers an opportunity to assess the initial claims of an application and potentially reduce downstream cost and cycle time. In appropriate cases, the ASRN could facilitate targeted claim amendments, curated evidence development, or strategic decisions regarding continued pursuit of the application.
How It Works
Applicants who desire to opt in to the program will file a petition and pay an associated petition fee to trigger inclusion of the subject application in the pilot. After filing the application, the USPTO’s AI system will conduct a contextual search drawing on CPC classification and textual features of the application. The ASRN will provide the Office’s preliminary view of the top prior art concerns, delivered before a first Office action on the merits. The notice is not a binding examination position, but it is intended to guide applicants toward informed first actions.
Strategic Options Prompted by an ASRN
The ASRN is designed to support early strategic choices, including, as appropriate to the art and record: filing a preliminary amendment to sharpen claim scope; preparing evidence for affidavit practice or requesting official notice; seeking deferral; or, if warranted, petitioning for express abandonment and seeking refunds where available.
Practical Considerations and Recommendations
Applicants should calibrate their approach by technology area and portfolio objectives. Where claim scope is still in flux, an early look at the Office’s AI-identified art can inform a more surgical first amendment, potentially mitigating broad rejections and reducing the number of rounds to allowance. For applications in crowded technology fields, proactively assembling objective evidence and expert declarations in response to the ASRN may help streamline prosecution and provide valuable data for budgeting concerns. Conversely, for filings pursued for provisional positioning or where commercial priorities have shifted, the ASRN may support a business decision to discontinue at lower sunk cost.
From a process standpoint, IP management teams should plan for a quick internal review cadence following receipt of an ASRN, including technical input from inventors and alignment with business stakeholders. Applicants should also maintain careful docketing to ensure any responsive steps (e.g., preliminary amendments or petitions) are timely and consistent with broader portfolio management strategies.
Eligibility and Participation
Participation in the pilot program is voluntary and requires filing a petition accompanied by a petition fee. The Office will analyze and use pilot program results to assess quality, efficiency, and scalability and to determine whether and how to expand or refine the program.
Questions Raised
Will future iterations of the AI program include drawing evaluation, comparison, and analysis? Will applicants eventually be required to perform initial AI-integrated searches for prior art and submit results as a matter of course in every utility application? How will the ASAP! tool affect the amount of time that examiners are allotted for examining each application?
Key Takeaways
The ASAP! pilot signals continued USPTO investment in AI-enabled workflows and a focus on quality at filing. For applicants, the program offers a structured opportunity to strengthen applications earlier in the examination process, hedge against avoidable prosecution churn, and make more timely resource allocation decisions. We recommend evaluating the desirability of participating in the ASAP! Program on an application-by-application basis, prioritizing applications where early claim tailoring or evidence development is likely to yield meaningful efficiency or clarity gains unique to each of our clients’ individual goals.
