How does USPTO use AI for patent searches?
This is a must read for those wondering whether or not to do a patent search before filing a utility patent application. In a pilot program launched in October of 2025, the USPTO is allowing utility patent filers to request a prior art searched assisted by artificial intelligence. These AI patent searches will be conducted prior to examination by a human patent examiner.
Not sure whether to file a patent application or do a prior art search first? Contact US patent attorney Vic Lin at vlin@icaplaw.com to explore how we can help.
Should you do your own prior art search before filing a utility patent application?
While this AI-assisted prior art search program is available, you might want to think twice about doing your prior art search before filing a utility patent application. Here are a few reasons to skip a prior art search and let the USPTO do it instead.
First, you can save on the costs and time for conducting a prior art search.
Second, you can initially avoid having to tell the Patent Office about any known prior art references. If you are not aware of any relevant prior art at the time of initial filing, then you would not need to submit an Information Disclosure Statement (IDS) at that time.
Third, the results retrieved by the USPTO in its AI-assisted prior art search will be sent to the applicant before the examiner begins examination of the utility patent application. This gives the applicant an opportunity to amend the claims prior to examination as discussed below.
When do you need to request to participate in the ASAP! automated search pilot program?
An ASAP! petition must be submitted with the initial filing of a utility nonprovisional patent application. You cannot request an automated prior art search after your utility nonprovisional application has been filed.
As a workaround, consider filing a child application with a request for an automated prior art search. Since the USPTO might implement quotas of 200 per technology center or 1,600 total, make sure the ASAP! pilot program is still available before filing a petition.
The ASAP! pilot program is currently scheduled to end in April 2026 as of the date of this post, but it may get extended.
How can you use the AI patent search results to improve your utility patent application prior to examination?
After searching relevant prior art using AI, the USPTO will send a list of the relevant prior art references in an Automated Search Results Notice.
At this point, the main question is whether or not you should amend your claims prior to the review by the examiner. If so, you will want to have a Preliminary Amendment filed promptly.
Should you disclose the prior art references found in the USPTO AI patent search?
Generally, it may be wise to err on the side of caution and disclose the prior art references found in the USPTO AI search. That way, you fulfill your duty of disclosure to the Patent Office.
