More Visibility Into Patent Timing at the USPTO

At this moment, the delay between filing an application and getting the first substantive response from the USPTO averages 22 months. But for any specific application? It’s hard to say …

But May 2026 brings two developments for patent applications:

• First Action Estimator back online: When a registered user checks an application in the USPTO’s Patent Center, there is an estimate for number of months remaining until the first substantive action by the USPTO
• Pre-Docketing Notice: Now, 3 months before the application is assigned to an examiner, the USPTO sends the attached pre-docketing notice.

You Don’t Have To Do Anything

You don’t have to respond to the pre-docketing notice. It’s just a heads-up to consider the variety of actions you might take before an examiner reviews the application. If you’re a client, we’ll recommend which, if any, make sense for your business. Here’s a partial list:

1. Consider claim amendments. If the commercial implementation has changed or the understanding of prior art has changed (for example, from prosecuting a similar application in another country), this is a good opportunity to update the claims so the examiner will consider the updated claims. Once the examiner has begun to examine the claims, the ability to drastically change the claims is reduced.
2. Confirm bibliographic details. Make sure the named inventors and applicant are correct, and that assignments from the inventors to the applicant are recorded.
3. Clean up application. File formal drawings and make typographical corrections to specification.
4. File an Information Disclosure Statement. Any relevant prior art that the inventors, applicants, or patent practitioners know of must be submitted. If you don’t submit it now, you increase the risk of delays, extra government fees, and reductions in patent term.
5. (RISKY) Abandon the application. This is not a reversible action but, if the application has zero value to you (or to potential investors, partners, acquirers, etc.) and you abandon the application before an examiner reviews the application, you get a partial refund of government fees. The refund would be the search fee (currently $770 for a large entity; 60% less, if you’re a small entity) plus any excess-claim fees.

Questions?  Contact the author of this article, Michael Nye or a member of our Intellectual Property team.