USPTO Introduces Pilot Program to Defer Response to Subject Matter Eligibility Rejections | Morgan Lewis
The US Patent and Trademark Business is employing a pilot program to permit taking part candidates to defer responding to subject issue eligibility rejections right until the previously of a ultimate disposition of the software, or a withdrawal or obviation of all other outstanding rejections.
Below the Deferred Matter Make a difference Eligibility Reaction Pilot system (the Pilot), specific applicants that have been given a rejection on issue matter eligibility (SME) and other patentability-relevant rejections, may acquire invites to participate in the Pilot. Applicants who settle for the invitation may defer responding to the SME rejections until all other troubles have been resolved. Some causes for accepting (or not accepting) these kinds of an invitation are mentioned beneath.
By introducing this Pilot, the US Patent and Trademark Office environment (USPTO) is ostensibly seeking to consider regardless of whether deferred application responses to SME rejections affect examination effectiveness and patent excellent. The rationale is that gratifying non-SME conditions for patentability may perhaps take care of the SME difficulties.
Construction OF THE Application
An application must fulfill all of the subsequent criteria to be qualified for the Pilot[1]:
- The application is assigned to a participating examiner. (Though the Pilot is open up to all major examiners, examiner participation is not required.)
- The application is an original nonprovisional utility application or a countrywide phase application. Continuation and divisional software, as perfectly as purposes with unique position (e.g., quickly monitor assessment) are not qualified for the Pilot.
- The to start with Place of work Motion involves both equally SME and non-SME rejections.
For the reasons of the Pilot, an SME rejection is a rejection underneath 35 USC § 101 that includes, below the USPTO’s patent eligibility pointers, both action 1 rejections, where by the claim as a full does not fall in just a statutory classification, and phase 2B rejections, wherever the claim as a complete is directed to a judicial exception without the need of also which includes supplemental constraints amounting to significantly far more than the exception.
Under the provisions of the Pilot, taking part examiners may possibly invite an applicant of an qualified software to participate in the Pilot. If an applicant wishes to take part in the Pilot, a timely response should be accompanied by a duly finished ask for variety. Failure to file the type will exclude the application from the Pilot. On top of that, the moment entered into the Pilot, there is no provision to withdraw from the Pilot.
While the Pilot permits a participating applicant to defer responding to the SME rejections in particular situation, not availing this sort of reward and voluntarily responding to these rejections does not withdraw or clear away the software from the Pilot.
The Notice implies that any comments relating to this Pilot need to be obtained by March 7, 2022 to make certain thought. The Pilot will operate from February 1, 2022 by means of July 30, 2022.
PROSECUTION OF Participating Purposes
Candidates electing to take part in the Pilot need to file a reply to each Workplace Motion mailed in the participating applications. Participation in the Pilot, however, offers a constrained waiver allowing the applicants to defer presenting arguments, evidence, or amendments in response to the SME rejection(s) right up until the before of closing disposition of the participating software or the withdrawal or obviation of all other remarkable rejections. The constrained waiver terminates upon the mailing of a second or subsequent non-final Office environment Action made up of only the SME rejection(s) because the applicant has prevail over or the examiner has withdrawn all the non-SME rejections.
As an illustration, less than the Pilot, if an Place of work Motion incorporates a phase 1 SME rejection, a step 2B SME rejection, and a prior art rejection, the applicant may perhaps: (1) answer only to the prior artwork rejection (2) reply to the prior artwork rejection and a single of the SME rejections or (3) react to all a few rejections, for the reaction to be deemed a bona fide response.
The examiner, in flip, is necessary to contemplate irrespective of whether the applicant’s responses to the non-SME rejections defeat the SME rejection(s) of file. Additional, if the examiner deems that the applicant’s responses—despite the deferral of a response to the SME rejection(s)—overcomes all rejections, the examiner will have to problem a Notice of Allowance, and contain the reasons for allowance as required. On the other hand, if the examiner deems that the responses do not get over all remarkable rejections, and troubles a last Business Motion, the limited waiver beneath the Pilot is terminated.
It should really be mentioned that because the issuance of a final Office environment Action is regarded as a closing disposition resulting in termination of the constrained waiver beneath the Pilot, there are no adjustments to just after-remaining apply under this Pilot.
Exercise Ideas
Conquering prior artwork (i.e., non-SME) rejections could obviate, or render moot, Phase 2B SME rejections, as if the invention is found to be novel and non-obvious it may perhaps prevail over the “substantially more” necessity of Move 2B analysis of a 101 rejection. In this kind of instances, it is worthwhile, in conditions of time and price tag efficiency, to use the Pilot program to first aim arguments on beating the prior art rejections. This sort of a predicament might occur when, for instance, the SME rejection focuses exclusively on the conventionality or routineness of the more features, and the arguments from the prior art rejections make it plain that the additional things are novel and non-apparent.
The MPEP clarifies that the Phase 2A of the SME investigation “specifically excludes thought of regardless of whether the more features depict effectively-comprehended, schedule, standard exercise … Extra features that characterize effectively-comprehended, program, common action may well combine a recited judicial exception into a functional software.”[2] So, the precise exclusion of purposes with Phase 2A (but not Action 2B) rejections from this Pilot method seems to indicate a belief on element of the PTO that conquering prior artwork rejections would logically outcome in the summary that the ingenious notion in the declare is, in reality, not regular and amounts to a lot more than what is disclosed in the prior art.
Therefore, in cases exactly where an applicant thinks that Move 2B SME rejections are improper since the examiner improperly deems ingenious principle as staying standard or as not amounting to noticeably far more, the applicant may perhaps want to concentration their efforts on conquering prior art rejections and in the method render the Phase 2B SME rejections moot.
In addition, if all the non-SME troubles are resolved throughout prosecution, and only SME rejections—in particular Action 2B rejections—are preserved, practitioners could decide to attraction only the SME query, thereby simplifying the appeal procedure.
Also, numerous practitioners, at least anecdotally, show up to by now be focusing on conquering prior artwork rejections, as conquering all prior artwork rejections could soften examiners’ stance on the SME issues.
In summary, when practitioners will have to make a decision no matter if it is worthwhile accepting an invitation to take part in the Pilot on a case-by-situation basis, statements in which it is rather less difficult to argue that the more features are not standard or program may possibly be better suited for this Pilot.
[1] 87 Fed. Reg. 776-780 (January 6, 2022).
[2] MPEP 2106.04(d)(I)
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