USPTO Launches Pilot Program to Defer Subject Matter Eligibility Rejections

The USPTO will be launching a new pilot program on February 1, 2022, which will allow patent applicants, in some cases, to defer responding to subject matter eligibility rejections until other bases for rejection are withdrawn.

The United States Patent and Trademark Office ("USPTO") earlier this month announced a new Deferred Subject Matter Eligibility Response ("DSMER") pilot program for nonprovisional patent applications that will launch on February 1, 2022, and end on July 30, 2022. This pilot program was initiated in response to a letter from Senators Thom Tillis and Tom Cotton and, according to the USPTO, is designed to evaluate how deferred applicant responses to subject matter eligibility ("SME") rejections under 35 USC §101 could affect examination efficiency and patent quality as compared to traditional compact prosecution practice.

Participation in this program is by invitation only. Applicants may receive invitations to participate if their applications meet the following criteria:

  • The application is an original nonprovisional utility application or national stage of an international application;
  • The application does not claim the benefit of the earlier filing date of any prior nonprovisional application; 
  • The application has not been advanced out of turn (accorded special status); and
  • The first office action on the merits makes both SME and non-SME rejections.

Participation in this pilot program provides the applicant with a limited waiver of 37 CFR §1.111(b) with respect to SME rejections in the participating application. In particular, the limited waiver permits the applicant to defer presenting arguments or amendments in response to the SME rejection(s) until the earlier of final disposition of the participating application, or the withdrawal or obviation of all other outstanding rejections. Other than this permitted deferral of responding to SME rejection(s), the applicant's replies must be fully responsive to office actions, and the application will undergo the normal prosecution process as described in MPEP chapter 700.

More information about this pilot program is available in the Federal Register Notice announcing the program and on the DSMER pilot program page of the USPTO website.

It remains to be seen what impact this pilot program will have on patent examination as SME rejections are often effectively deferred using various prosecution tactics until prior art issues have been overcome.  One potential outcome is the quicker issuance of office actions given that the examiner has a reduced burden with regard to SME rejections.

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