The USPTO recently introduced its Automated Search Pilot Program, offering applicants an opportunity to receive an automated prior art search result before substantive examination begins. For in-house counsel overseeing patent portfolios and outside counsel advising on filing strategy, the program raises a practical question: does earlier access to machine-generated prior art improve decision-making, or does it introduce additional cost and complexity without a clear benefit?
What Is the Automated Search Pilot Program?
At a high level, the program allows applicants to request that the USPTO conduct an AI-assisted prior art search after filing but before examination. If accepted, the Office issues an Automated Search Results Notice, or ASRN, identifying up to ten potentially relevant references.
Participation is not automatic. Applicants must affirmatively opt in by filing a properly signed petition using Form PTO/SB/470, titled “Certification and Petition Under 37 CFR 1.182 to Participate in the Automated Search Pilot Program,” at the time of filing.
One recent development may increase participation. To reduce financial barriers, the USPTO has waived the petition fee for qualifying petitions filed on or after March 23, 2026. That change removes one of the more obvious friction points and may make the program easier to test, particularly for applicants that were previously hesitant to incur additional upfront costs.
Why In-House Counsel May Find It Useful
From an in-house perspective, the appeal is easy to understand. Many teams are already looking for ways to evaluate applications earlier in the lifecycle, particularly in higher-volume filing environments. Receiving a USPTO-generated search result before the first Office Action may provide an additional data point for shaping prosecution strategy at an earlier stage.
For example, applicants may choose to narrow pending claims to better distinguish identified references, draft new claims directed to different inventive aspects, or revise claim language to capture the invention from a different perspective. Even incremental improvements in how claims are framed at the outset of examination can have a meaningful impact on prosecution efficiency and, in turn, overall prosecution costs.
Key Considerations and Potential Risks
At the same time, the structure of the program raises a few considerations that are worth keeping in mind. The ASRN is limited to a relatively small number of references, ranked by an internal AI model using the application’s classification and text. While that may surface relevant art, it also means that applicants are working from a curated and potentially incomplete dataset, with limited visibility into how the results were generated or prioritized.
There is a risk that early exposure to a narrow set of references could shape prosecution strategy in ways that may not ultimately align with the examiner’s approach. In some cases, this may lead to over-narrowing claims or focusing too heavily on art that does not become central during examination.
There is also a strategic dimension to consider. Even though applicants are not required to respond to the ASRN, the cited references may still be considered by the examiner and, if relied upon, could become part of the prosecution record. As a result, decisions about how to use the ASRN may have downstream implications for claim strategy, Information Disclosure Statement practice, and overall positioning during examination.
Practical Considerations Before Opting In
Process considerations remain part of the equation. Participation requires coordination at filing, including use of the correct form and compliance with the program’s eligibility requirements.
In addition, because the program is a pilot with limited capacity and the possibility of early termination or modification, it may be difficult to incorporate into a consistent, long-term filing strategy.
In that context, it can be helpful to ask a threshold question: what decision would actually change based on the ASRN? If the answer is clear, such as improving early claim strategy or identifying applications that may require repositioning, the program may offer real value. If not, the ASRN risks becoming another input that adds noise rather than clarity.
A Measured Approach
The Automated Search Pilot Program reflects the USPTO’s continued interest in integrating AI tools into the examination process. Whether this particular implementation proves valuable will likely depend on how applicants choose to use it.
For now, it may be best viewed as a targeted option to be deployed selectively, particularly now that the removal of the petition fee lowers the barrier to experimentation.
Incorporating the Automated Search Pilot Program into Patent Strategy
For companies managing patent portfolios or refining filing strategies, a measured approach to tools like the Automated Search Pilot Program can help balance early insight with strategic flexibility. Contact Conley Rose to discuss whether your organization should incorporate this emerging USPTO initiative into a practical and effective patent strategy.