PTO Proposes Deferred Responses for Subject Matter Eligibility Rejections | McDermott Will & Emery

Codi Saxon

In a January 6, 2022, Federal Sign-up discover, the US Patent and Trademark Office (PTO) declared its intention to employ a pilot plan to appraise the consequences of allowing candidates to defer responding to subject issue eligibility (SME) rejections in specified patent programs. Less than this pilot application, applicants might […]

In a January 6, 2022, Federal Sign-up discover, the US Patent and Trademark Office (PTO) declared its intention to employ a pilot plan to appraise the consequences of allowing candidates to defer responding to subject issue eligibility (SME) rejections in specified patent programs. Less than this pilot application, applicants might get invites to participate if their programs satisfy the program’s standards, like a criterion that the claims in the software necessitate rejections on SME and other patentability-relevant grounds. An applicant who accepts the invitation to take part in this pilot plan should however file a reply addressing all the rejections besides SME rejections in each individual office action mailed in the application but is permitted to defer responding to SME rejections right up until the before of ultimate disposition of the software or the withdrawal or obviation of all other superb rejections.

Invitations to participate in the Deferred Subject matter Make any difference Eligibility Response pilot method will be mailed in the course of the time period among February 1, 2022, and July 30, 2022. The PTO may well increase, modify or terminate the pilot system based on the workload and methods required to administer the plan, suggestions from the public and the program’s efficiency.

Due to the fact satisfaction of non-SME conditions for patentability (e.g., novelty, nonobviousness, adequacy of disclosure and definiteness) may perhaps take care of SME challenges as very well, the pilot method may possibly outcome in improved examination performance and increased patent top quality.

An examiner may perhaps invite a potential applicant to participate in the pilot system by which include a type paragraph in the initial business action on the deserves. An applicant getting an invitation to take part in the pilot system may perhaps elect to settle for or decrease the invitation. If an applicant needs to take part in the software, they should file a effectively concluded request kind PTO/SB/456 concurrently with a timely reaction to the very first office environment action on the merits. The ask for sort will have to be submitted by using the PTO’s patent digital submitting units.

The limited waiver permits the applicant to defer addressing the SME rejections until eventually the before of remaining disposition of the taking part software or the withdrawal or obviation of all other exceptional rejections. A final disposition is the earliest of the subsequent:

  • Mailing of a recognize of allowance
  • Mailing of a closing office environment motion
  • Filing of a discover of appeal
  • Filing of a ask for for continued examination
  • Abandonment of the software.

Candidates need to handle the SME rejections in a reaction to a remaining rejection or the submitting of a ask for for ongoing assessment.

The general public is invited to post reviews, which will have to be received by March 7, 2022, to ensure consideration.

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