Subject Matter

USPTO’s Pilot Program For Deferring Subject Matter Eligibility Response – Intellectual Property

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United States: &#13
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USPTO’s Pilot Method For Deferring Issue Issue Eligibility Reaction&#13

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To print this report, all you need to have is to be registered or login on Mondaq.com.&#13

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  1. Introduction
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On January 6, 2022, the U.S. Patent and Trademark Office environment (USPTO)&#13
introduced a Deferred Subject Matter Eligibility Reaction Pilot&#13
Plan (the “DSMER Method”). We provide a transient&#13
overview of this application.

Now, the USPTO applies a “compact prosecution&#13
solution” in inspecting patent programs. Below this&#13
approach, an examiner will identify all relevant grounds for&#13
objections and rejections in just about every Business Action. An applicant is&#13
expected to handle all these objections and rejections in one&#13
response. A response that fails to meet this necessity might be&#13
thought of “not thoroughly responsive” and be turned down by the&#13
USPTO.

The DSMER Program lets an applicant to hold off responding to one&#13
or additional Topic Make any difference Eligibility (SME) rejections below 35 U.S.C.&#13
§ 101 until the previously of the remaining disposition of the&#13
application, or the withdrawal or obviation of all other non-SME&#13
rejections. For case in point, for responding to a non-remaining Business office&#13
Action that has elevated a rejection underneath 35 U.S.C. §101 (an&#13
SME rejection) and a rejection beneath 35 U.S.C. §102 (a non-SME&#13
rejection), the applicant could choose to address only the §102&#13
rejection and defer addressing the §101 rejection.

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  1. Eligibility and Participation
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A patent application requires to fulfill the adhering to conditions to be&#13
suitable for the DSMER Plan:

(a) the application is an authentic nonprovisional utility&#13
application or countrywide stage of an intercontinental software

(b) the software does not assert the advantage of the before&#13
submitting day of any prior nonprovisional application

(c) the software has not been superior out of turn and

(d) the very first Place of work Action on the merits includes equally SME and&#13
non-SME rejections.

In accordance to disorders (a) and (b), a continuation/divisional&#13
application will be ineligible to the DSMER Method due to the fact it statements&#13
precedence to a further nonprovisional software (its mum or dad&#13
software). On the other hand, a nationwide stage application that&#13
statements precedence to an worldwide software (i.e., a PCT&#13
application) or an software that promises precedence to a&#13
provisional software is suitable.

According to issue (c), an application that is granted a&#13
exclusive status for expedited processing, these as below Monitor 1 or&#13
Patent Prosecution Highway (PPH), is ineligible to the DSMER&#13
Plan.

In accordance to affliction (d), the DSMER Method is only open up to&#13
apps ruled by the SME needs (the needs of&#13
35 U.S.C. §101). Plant applications and design purposes&#13
are excluded as they are not ruled by the SME demands.

At this time, participation in the DSMER Application is by&#13
invitation only. If an software meets the eligibility requirements,&#13
the applicant may perhaps receive an invitation to take part. The&#13
invitation will be incorporated in the first Office environment Action on the&#13
merits. An applicant getting an invitation may perhaps pick to accept&#13
or drop the invitation. An applicant who accepts the invitation&#13
demands to file a request variety PTO/SB/456 concurrently with a timely&#13
reaction to the initially Office environment Motion on the deserves to reveal the&#13
acceptance.

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  1. Period of the DSMER Method
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The DSMER Plan is set to operate from February 1, 2022 to July&#13
30, 2022. All through this time period, applicants of qualified apps&#13
might acquire invitations to take part in the DSMER Software.

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  1. Conversations
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Beneath the DSMER System, if a non-last Place of work Action has equally&#13
SME and non-SME rejections, the applicant can respond only to the&#13
non-SME rejections. Even with the SME challenges deferred, the examiner&#13
will still contemplate whether an applicant’s reaction to non-SME&#13
rejections get over the SME rejections. The SME difficulties may perhaps be&#13
resolved while gratifying the non-SME requirements (this is&#13
essentially frequently the circumstance). This improves prosecution performance,&#13
helps applicants help save time and price, and also keeps the file&#13
background clean. On the other hand, if the SME difficulties are not solved following&#13
contemplating the applicant’s reaction, the examiner might problem a&#13
remaining Office Motion irrespective whether any non-SME rejection&#13
continues to be. In this situation, the applicant loses a probability to reply&#13
to the SME rejection at the non-closing Office environment Action phase and have&#13
to deal with it at the ultimate Business office Action stage. Also,&#13
since non-SME troubles and SME concerns are addressed sequentially&#13
somewhat than concurrently, the whole prosecution time for these&#13
applications might be prolonged.

The material of this report is meant to offer a basic&#13
guideline to the subject matter make any difference. Professional assistance should be sought&#13
about your certain circumstances.

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