In a Federal Sign up Recognize revealed January 6, 2022, the USPTO announced a new pilot software that will allow certain candidates to temporarily defer responding to issue subject eligibility (“SME”) rejections. The program is responsive to the March 22, 2021 letter from Senators Tillis and Cotton suggesting that the USPTO modify its compact prosecution paradigm with respect to SME concerns, but will this system address the Senators’ considerations?
The Pilot System – Are You Invited?
As stated on the Deferred Topic Subject Eligibility Reaction (“DSMER”) webpage, unlike most USPTO pilot plans that candidates decide-in to, participation in the DSMER pilot software is “by invitation only.”
According to the Federal Sign-up Notice, to qualify for an invitation:
the software have to be an original (not reissue) nonprovisional utility application or nationwide stage of an international application
the application ought to not claim the profit of the before filing date of any prior nonprovisional software (i.e., continuation and divisional applications are excluded)
the application must not have been accorded particular status (but can ask for to participate in the Fast-Keep track of Appeals Pilot Program or file an RCE with a ask for for Keep track of I expedited evaluation immediately after collaborating in the DSMER pilot application)
the application will have to be assigned to a collaborating key examiner
the very first Office environment Action on the merits should include things like the two SME and non-SME rejections
The invitation will be manufactured in a form paragraph in the very first Place of work Action on the merits. To take the invitation, the applicant ought to file concluded form PTO/SB/456 with a timely response to the Place of work Action. No unique action is expected to drop the invitation.
The Pilot Program – Why Take part?
Applicants who participate in the DSMER pilot application are excused from acquiring to deal with the SME rejection(s) lifted in the initial Office Action “until the before of remaining disposition of the participating software or the withdrawal or obviation of all other remarkable rejections.”
As usual in USPTO lingo, “final disposition” usually means the earliest of:
mailing of a Discover of Allowance
mailing of a closing Place of work Action
submitting of a Detect of Appeal
filing of an RCE
abandonment of the application.
As explained in the Federal Register Observe, “‘withdrawal or obviation of all other remarkable rejections’ refers to the problem in which a second or subsequent non-final Workplace motion made up of only the SME rejection(s) is mailed … for the reason that the applicant has conquer, or the examiner has withdrawn, all the non-SME rejections that had been formerly designed.” After this kind of a non-closing Business office Motion has been issued, the Applicant is needed to tackle the SME rejection(s).
Therefore, an applicant who participates in the DSMER pilot plan is excused from getting to tackle the SME rejection(s) when responding to the to start with Office Action. If the future Office environment Motion(s) also transpires to be non-remaining, the applicant also is excused from owning to deal with the SME rejection(s) when responding to the subsequent non-remaining Office Action(s).
The authentic opportunity profit of the DSMER pilot application is the chance that the arguments/amendments made to handle the non-SME rejections conquer the SME rejections. On this point, the Federal Sign-up Recognize emphasizes that even nevertheless the applicant does not have to deal with the SME rejection(s) directly, “the examiner will think about no matter if the applicant’s responses to other rejections (e.g., amendments designed in response to an obviousness or indefiniteness rejection) get over the SME rejection(s) of file.”
The Pilot Software – Why Decline The Invitation?
Candidates looking at no matter whether to take part in the DSMER pilot system should be knowledgeable of the penalties of coming to a “final disposition” without having obtaining resolved the SME rejection(s). The Federal Sign-up Detect points out that the moment a remaining Office Motion is issued, the waiver of the pilot software ends. Hence, any soon after-closing response or enchantment has to tackle the SME rejection(s) on the existing file. The Federal Register Detect expressly warns:
Applicants are cautioned that participation in this system is not, in by itself, a superior and sufficient motive why an modification or proof was not before introduced underneath 37 CFR 1.116 or 41.33. See, e.g., MPEP 714.12 and MPEP 1206 relating to amendments and other replies soon after final rejection or attractiveness.
This usually means applicants who have participated in the DSMER pilot software might have to file an RCE to address the deferred SME rejection(s), even if they would be ready to attractiveness the non-SME rejections.
The Pilot Application – Does It Deal with The Concerns Lifted In The Tillis-Cotton Letter?
In their letter to the Commissioner, Senators Tillis and Cotton expressly requested the USPTO to adjust the examiner’s approach to evaluation:
[W] e question that you initiate a pilot program directing examiners to implement a sequenced approach to patent examination. This pilot program would require selected examiners—and applicants who voluntarily elect to participate—to interact in a comprehensive assessment of the grounds of patentability and then, when that method is total, a comprehensive assessment of the grounds of eligibility. These types of a pilot application should perform a extensive and sensible quantity of exams utilizing this process and measure no matter whether this solution is far more effective, and creates increased quality patents, than the conventional compact examination tactic.
Alternatively, the DSMER pilot program necessitates examiners to continue the present follow of examining eligibility under § 101 at the very same time they are assessing patentability below §§ 102, 103, and 112, which is the extremely approach the Senators have been anxious about. For illustration, the Senators lifted concerns that the present-day process may well direct examiners to “issue Section 101 rejections without the need of the profit of addressing prior artwork, clarity and enablement difficulties that might perfectly inform the examiner that the declare is eligible below Portion 101,” and could bring about examiners to “spend inordinate time on Segment 101 at a time when it is difficult or difficult to conduct a significant evaluation underneath Section 101.”
The DSMER pilot plan does not supply the pros of the sequenced tactic the Senators had recommended. It would not “focus original evaluation on the objective parts of patentability as opposed to the abstract, obscure, and subjective questions of eligibility.” It would not “improve efficiency by staying away from the squander of important examination … time on imprecise concerns of patent eligibility as a threshold make a difference.” It is not clear it would “lead to stronger, additional responsible, and bigger quality patents by focusing very first on the far more rigorous and simple to detect specifications of patentability.”
The USPTO may perhaps argue that the DSMER pilot program could have these results for the reason that examiners will look at no matter whether arguments/amendments built to address the non-SME rejections overcome the SME rejections, even if applicants do not deal with the SME rejections straight. But examiners even now will have invested time formulating the SME rejections, and could be considerably less possible to withdraw them without having the applicant’s rationalization of how the arguments/amendments establish eligibility.
The USPTO will start out issuing invites to take part in the DSMER pilot method beginning February 1, 2022, continuing through July 30, 2022. The USPTO will look at remarks on the pilot software submitted via the Federal eRulemaking Portal received by March 7, 2022.