USPTO Deferred Subject Matter Eligibility Response Pilot Program Appears to Benefit Applicants | Blank Rome LLP

Codi Saxon

It is a fundamental truism in patent regulation that the scope of patent promises can modify during the class of prosecution. Latest examination recommendations call for an examiner to discover all relevant grounds of rejection in a very first workplace action and involve an applicant to react to all these […]

It is a fundamental truism in patent regulation that the scope of patent promises can modify during the class of prosecution. Latest examination recommendations call for an examiner to discover all relevant grounds of rejection in a very first workplace action and involve an applicant to react to all these rejections. Declare amendments addressing one particular rejection can specifically or indirectly resolve other rejections, for example by including clarity or creating mootness. This is a widespread occurrence when claims are turned down based mostly on prior art underneath sections 102 or 103 and also as directed to ineligible subject matter less than section 101, due to the fact amendments intended to overcome the cited prior art can effect the “inventive concept” evaluation of section 101.

To tackle this situation, the U.S. Patent and Trademark Workplace (“USPTO”) has declared a new Deferred Topic Issue Eligibility Response (“DSMER”) pilot program, which makes it possible for for a sequenced tactic to patent examination for subject make any difference eligibility (“SME”) rejections under 35 U.S.C. 101. This pilot application, setting up on February 1, 2022, and ending on July 30, 2022, will invite patent candidates to participate if their software does not declare reward of an before filing date from a prior nonprovisional software, has not been accorded exclusive position, and has a initial office action that incorporates each a SME rejection and a non-SME rejection, this sort of as a rejection under 35 U.S.C. 102, 103, or 112.

If invited, applicants choosing to participate in the pilot plan will be in a position to defer a reaction to the SME rejection till all other rejections have been addressed or settled. Invites to the pilot method will be offered by a kind paragraph in the 1st office action and elections to take part will be approved via ask for sort PTO/SB/456 filed concurrently with a response to the initial business motion. Not all examiners will be participating in the pilot method, but the USPTO anticipates that a representative quantity of main examiners from every single relevant technologies center will take part.

Responding to early SME rejections can be a time intense and costly proposition, particularly as claims can substantially improve during the class of prosecution. Beneath the pilot method, an applicant has an prospect to defer addressing the SME rejections right up until non-SME rejections have been dealt with. The applicant can also combine an amendment addressing the SME rejection with other amendments directed to the non-SME rejections without the need of obtaining to straight argue the SME rejection. This can assist lower charges linked with the response and leaves a leaner prosecution historical past. It remains to be observed irrespective of whether deferred examination of the SME rejections may trigger an increase in the quantity of early SME rejections that are later withdrawn. For now, the new pilot method looks to be a effective transform that can assist deliver some reduction to the recent imprecision of SME jurisprudence.

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