USPTO Announces Deferred Subject Matter Eligibility Response Pilot Program | Foley & Lardner LLP

Codi Saxon

In a Federal Sign up Observe published January 6, 2022, the USPTO introduced a new pilot software that will allow certain candidates to briefly defer responding to subject subject eligibility (“SME”) rejections. The method is responsive to the March 22, 2021 letter from Senators Tillis and Cotton suggesting that the […]

In a Federal Sign up Observe published January 6, 2022, the USPTO introduced a new pilot software that will allow certain candidates to briefly defer responding to subject subject eligibility (“SME”) rejections. The method is responsive to the March 22, 2021 letter from Senators Tillis and Cotton suggesting that the USPTO modify its compact prosecution paradigm with regard to SME problems, but will this application handle the Senators’ concerns?

The Pilot Plan – Are You Invited?

As explained on the Deferred Matter Make any difference Eligibility Reaction (“DSMER”) webpage, in contrast to most USPTO pilot packages that candidates decide-in to, participation in the DSMER pilot system is “by invitation only.”

According to the Federal Sign-up Notice, to qualify for an invitation:

  • the software have to be an initial (not reissue) nonprovisional utility software or nationwide phase of an intercontinental software
  • the software ought to not claim the gain of the previously filing day of any prior nonprovisional software (i.e., continuation and divisional programs are excluded)
  • the application must not have been accorded distinctive standing (but can ask for to participate in the Quick-Observe Appeals Pilot Plan or file an RCE with a request for Monitor I expedited assessment right after taking part in the DSMER pilot program)
  • the software ought to be assigned to a participating principal examiner
  • the very first Place of work Action on the merits must contain equally SME and non-SME rejections

The invitation will be created in a sort paragraph in the to start with Business office Action on the merits. To settle for the invitation, the applicant should file accomplished sort PTO/SB/456 with a well timed response to the Place of work Motion. No specific motion is expected to decline the invitation.

The Pilot Method – Why Participate?

Applicants who take part in the DSMER pilot plan are excused from getting to address the SME rejection(s) lifted in the very first Business Motion “until the before of final disposition of the collaborating application or the withdrawal or obviation of all other excellent rejections.”

As usual in USPTO lingo, “final disposition” usually means the earliest of:

  • mailing of a Recognize of Allowance
  • mailing of a final Workplace Motion
  • submitting of a Notice of Charm
  • filing of an RCE
  • abandonment of the software.

As defined in the Federal Register Recognize, “‘withdrawal or obviation of all other exceptional rejections’ refers to the problem in which a 2nd or subsequent non-last Business motion that contains only the SME rejection(s) is mailed … due to the fact the applicant has get over, or the examiner has withdrawn, all the non-SME rejections that had been formerly manufactured.” Following these kinds of a non-remaining Workplace Motion has been issued, the Applicant is essential to tackle the SME rejection(s).

Hence, an applicant who participates in the DSMER pilot system is excused from owning to deal with the SME rejection(s) when responding to the to start with Place of work Motion. If the subsequent Office environment Motion(s) also transpires to be non-ultimate, the applicant also is excused from having to handle the SME rejection(s) when responding to the subsequent non-closing Place of work Motion(s).

The authentic prospective gain of the DSMER pilot application is the chance that the arguments/amendments made to handle the non-SME rejections get over the SME rejections. On this point, the Federal Sign up Detect emphasizes that even nevertheless the applicant does not have to address the SME rejection(s) specifically, “the examiner will think about whether or not the applicant’s responses to other rejections (e.g., amendments built in response to an obviousness or indefiniteness rejection) overcome the SME rejection(s) of history.”

The Pilot Program – Why Decrease The Invitation?

Applicants thinking about no matter whether to participate in the DSMER pilot system must be informed of the implications of coming to a “final disposition” without having having resolved the SME rejection(s). The Federal Sign-up Notice clarifies that at the time a final Place of work Motion is issued, the waiver of the pilot software ends. Hence, any right after-remaining response or attractiveness has to address the SME rejection(s) on the existing report. The Federal Sign up Observe expressly warns:

Applicants are cautioned that participation in this plan is not, in by itself, a excellent and adequate explanation why an modification or proof was not before offered less than 37 CFR 1.116 or 41.33. See, e.g., MPEP 714.12 and MPEP 1206 relating to amendments and other replies following ultimate rejection or attraction.

This usually means applicants who have participated in the DSMER pilot software may have to file an RCE to handle the deferred SME rejection(s), even if they would be completely ready to attractiveness the non-SME rejections.

The Pilot Software – Does It Handle The Considerations Lifted In The Tillis-Cotton Letter?

In their letter to the Commissioner, Senators Tillis and Cotton expressly requested the USPTO to modify the examiner’s solution to examination:

[W] e inquire that you initiate a pilot program directing examiners to use a sequenced tactic to patent assessment. This pilot program would demand selected examiners—and candidates who voluntarily elect to participate—to interact in a total examination of the grounds of patentability and then, the moment that approach is complete, a entire assessment of the grounds of eligibility. These a pilot method really should conduct a extensive and fair variety of examinations working with this approach and measure whether or not this tactic is extra helpful, and generates better high quality patents, than the traditional compact assessment strategy.

Alternatively, the DSMER pilot program calls for examiners to continue on the existing exercise of reviewing eligibility below § 101 at the identical time they are evaluating patentability under §§ 102, 103, and 112, which is the very approach the Senators were involved about. For example, the Senators lifted fears that the present-day procedure could direct examiners to “issue Portion 101 rejections without the need of the gain of addressing prior art, clarity and enablement issues that may well nicely tell the examiner that the assert is suitable beneath Segment 101,” and may trigger examiners to “spend[] inordinate time on Section 101 at a time when it is challenging or unattainable to perform a meaningful assessment underneath Portion 101.”

The DSMER pilot application does not offer you the rewards of the sequenced method the Senators experienced prompt. It would not “focus[] first evaluation on the aim spots of patentability as opposed to the abstract, imprecise, and subjective queries of eligibility.” It would not “improve[] effectiveness by averting the waste of useful examination … time on vague issues of patent eligibility as a threshold subject.” It is not apparent it would “lead[] to more powerful, far more reputable, and bigger excellent patents by concentrating initial on the extra demanding and straightforward to recognize benchmarks of patentability.”

The USPTO may well argue that the DSMER pilot application could have these results because examiners will take into account no matter if arguments/amendments designed to handle the non-SME rejections defeat the SME rejections, even if candidates do not handle the SME rejections directly. But examiners still will have put in time formulating the SME rejections, and might be a lot less most likely to withdraw them with out the applicant’s clarification of how the arguments/amendments establish eligibility.

The USPTO will start off issuing invitations to take part in the DSMER pilot application beginning February 1, 2022, continuing via July 30, 2022. The USPTO will take into account feedback on the pilot software submitted by the Federal eRulemaking Portal gained by March 7, 2022.

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