USPTO Announces Deferred Subject Matter Eligibility Response Pilot Program | McDonnell Boehnen Hulbert & Berghoff LLP

On January 6, 2022, the U.S. Patent and Trademark Workplace announced a new program with the objective of raising examiner efficiency.  The Deferred Subject matter Make any difference Eligibility Reaction (DSMER) Pilot Application will start on February 1, 2022 and end on July 30, 2022, except extended.[1]  The Software makes it possible for candidates to, in certain instances, not consist of a substantive reply to a 35 U.S.C. § 101 rejection in an Business office action response.  The USPTO initiated the Program at the suggestion of Senators Thom Tillis and Tom Cotton (see “Senators Tillis and Cotton Suggest Sequenced Evaluation Strategy“).

In buy for an application to high-quality for the Plan, it have to meet the following necessities:

• Assignment to a taking part examiner.  All key examiners can take part in the Program, but participation is not necessary.

• Be of the good application style and position.  All original non-provisional utility purposes (such as those people in nationwide stage) that do not assert priority to an previously non-provisional application are candidates.  These applications might assert priority to an earlier helpful precedence day than their individual, these types of as to a U.S. provisional or a PCT application.  Further, candidate applications cannot also take part in expedited prosecution packages (e.g., Observe 1), even though expedited right after-ultimate program (e.g., AFCP2. and QPIDS) participation is authorized.

• The promises are subject to rejection on the basis of both equally matter make any difference eligibility (35 U.S.C § 101) and a person or far more further problems for patentability (e.g., 35 U.S.C. §§ 102, 103, and/or 112, utility, inventorship, or double patenting).  No just one claim wants to be turned down below both equally § 101 and any of these other grounds.  Further, the two kinds of § 101 rejections qualify — promises that fail to be of one particular of the 4 statutory classes as perfectly as these that are directed to a judicial exception without reciting significantly far more than that exception.

A qualifying software will be identified in the very first Business action on the deserves (restriction or election needs are not regarded as initial actions on the deserves), hence restricting the method to usually unexamined applications.  In this Workplace action, the examiner will invite the applicant to take part in the Plan.  If the applicant agrees to take part, it have to electronically file a kind PTO/SB/456 concurrently with a well timed response to the Office motion.[2]  If the applicant does not file the kind, the application will not be in the Software and ordinary prosecution will continue.  Whilst participation in the Plan are unable to be withdrawn, the applicant may possibly at any time select not to avail alone of the Program’s provisions (i.e., the applicant can file a substantive reply to a § 101 rejection if wanted).

For a collaborating software, the applicant may file a reaction that defers “presenting arguments, evidence, or amendments in response to the SME rejection(s) right until the before of last disposition of the collaborating software or the withdrawal or obviation of all other outstanding rejections.”  But, the applicant must answer to all other objections and rejections in the Business office action.  In other phrases, if the claims are rejected on the grounds of matter make a difference eligibility and obviousness, the applicant should answer to the obviousness rejections and can opt for irrespective of whether to react to the eligibility rejections.

The “last disposition” over is when the earliest of any of the adhering to functions happens: (i) mailing of a see of allowance, (ii) mailing of a remaining Business office action, (iii) submitting of a see of appeal, (iv) filing of an RCE, or (v) abandonment of the application.[3]  In the scenario that the applicant receives a subsequent non-last Place of work motion in which only the § 101 rejection continues to be, the applicant ought to reply to this rejection even while the application has not attained a final disposition.

Even more, the applicant’s deferral of § 101 responses can be on a rejection-by-rejection foundation.[4]  For occasion, if an Place of work action consists of two diverse § 101 rejections, the applicant may perhaps defer a single, the other, or both equally.  The USPTO also contemplates eradicating an software from the Program in selected unusual cases, such as when a taking part examiner resigns or retires and the software is not reassigned to yet another collaborating examiner.

Even when § 101 troubles are deferred by the applicant, the examiner ought to think about regardless of whether the applicant’s responses made to handle other rejections (e.g., claim amendments in response to obviousness rejections) prevail over the § 101 rejections.  Furthermore, § 101 problems can be produced of report in job interview summaries, must these issues be reviewed by the examiner and the applicant’s consultant, as very well as in an examiner’s explanations for allowance.

On paper, the Method appears to be a constructive stage ahead, albeit a smaller a person.  With incredibly several exceptions, the Plan only applies when an software qualifies and the applicant is responding to a 1st motion on the deserves.[5]  Nonetheless, it does simplify the reaction process for the applicant (in some circumstances, responding to a § 101 rejection atop responding to a prior art rejection can double the amount of time and price tag of getting ready the reaction).

Moreover, numerous attorneys and brokers have previously adopted the observe of concentrating on prior art rejections more than § 101 rejections right until the former are conquer.  This is since for §§ 102 and 103 rejections, irrespective of whether the applicant need to make claim amendments is generally additional slice and dry than for § 101 rejections.  And, if amendments are designed to overcome prior artwork, then this narrowing could also position the claims in a extra favorable mild with regard to § 101.

The USPTO is inviting responses on the Plan until March 7, 2022.

[1] The USPTO really needs to get the job done on its acronyms.  DSMER?  It experienced the prospect to go with the “Matter Make any difference Eligibility Laying Small (Odor) Pilot System” . . . but no.

[2] The announcement states that the “variety need to be signed, in accordance with 37 CFR 1.33(b), by a particular person possessing the authority to prosecute the application.”  This implies that a power of attorney from the applicant to the attorney or agent really should not be necessary for this kind to be helpful. 

[3] In the circumstance of revival of an deserted software with pending § 101 rejections, the applicant need to consist of a reaction to these rejections even if the application was in the Application.

[4] It is not clear regardless of whether the applicant can select to defer § 101 rejections on a declare-by-declare basis.

[5] It would be attention-grabbing to know regardless of whether the USPTO regarded opening the application to article-RCE non-ultimate Office steps, and if so, why programs with this kind of a position do not qualify.