The US Patent and Trademark Office environment is implementing a pilot plan to enable collaborating candidates to defer responding to topic matter eligibility rejections until the previously of a closing disposition of the software, or a withdrawal or obviation of all other excellent rejections.
Underneath the Deferred Matter Make a difference Eligibility Response Pilot application (the Pilot), certain candidates that have been given a rejection on subject matter matter eligibility (SME) and other patentability-associated rejections, might acquire invitations to participate in the Pilot. Candidates who accept the invitation might defer responding to the SME rejections right until all other issues have been resolved. Some causes for accepting (or not accepting) these kinds of an invitation are talked over beneath.
By introducing this Pilot, the US Patent and Trademark Office (USPTO) is ostensibly trying to get to consider whether or not deferred software responses to SME rejections influence examination efficiency and patent top quality. The rationale is that satisfying non-SME conditions for patentability may well solve the SME concerns.
Framework OF THE Program
An software ought to meet up with all of the subsequent conditions to be qualified for the Pilot:
- The software is assigned to a taking part examiner. (Even though the Pilot is open up to all principal examiners, examiner participation is not mandatory.)
- The application is an primary nonprovisional utility application or a countrywide stage application. Continuation and divisional software, as properly as programs with distinctive standing (e.g., quick monitor evaluation) are not qualified for the Pilot.
- The 1st Business office Action includes each SME and non-SME rejections.
For the uses of the Pilot, an SME rejection is a rejection underneath 35 USC § 101 that contains, beneath the USPTO’s patent eligibility recommendations, equally phase 1 rejections, the place the claim as a complete does not slide within just a statutory group, and phase 2B rejections, in which the assert as a total is directed to a judicial exception without also including additional limits amounting to significantly extra than the exception.
Below the provisions of the Pilot, taking part examiners may perhaps invite an applicant of an suitable software to participate in the Pilot. If an applicant wishes to take part in the Pilot, a well timed reaction ought to be accompanied by a duly accomplished ask for variety. Failure to file the form will exclude the application from the Pilot. On top of that, once entered into the Pilot, there is no provision to withdraw from the Pilot.
Even though the Pilot allows a participating applicant to defer responding to the SME rejections in specific situations, not availing this sort of gain and voluntarily responding to this kind of rejections does not withdraw or clear away the application from the Pilot.
The Recognize signifies that any comments relating to this Pilot will have to be obtained by March 7, 2022 to assure consideration. The Pilot will operate from February 1, 2022 through July 30, 2022.
PROSECUTION OF Taking part Apps
Applicants electing to take part in the Pilot need to file a reply to every single Place of work Motion mailed in the taking part purposes. Participation in the Pilot, having said that, supplies a restricted waiver allowing the applicants to defer presenting arguments, evidence, or amendments in response to the SME rejection(s) until the earlier of closing disposition of the participating software or the withdrawal or obviation of all other outstanding rejections. The restricted waiver terminates on the mailing of a next or subsequent non-final Business office Action that contains only the SME rejection(s) simply because the applicant has overcome or the examiner has withdrawn all the non-SME rejections.
As an illustration, below the Pilot, if an Workplace Motion features a phase 1 SME rejection, a phase 2B SME rejection, and a prior art rejection, the applicant may perhaps: (1) react only to the prior artwork rejection (2) reply to the prior art rejection and 1 of the SME rejections or (3) answer to all a few rejections, for the response to be thought of a bona fide response.
The examiner, in turn, is needed to contemplate whether the applicant’s responses to the non-SME rejections overcome the SME rejection(s) of document. More, if the examiner deems that the applicant’s responses—despite the deferral of a reaction to the SME rejection(s)—overcomes all rejections, the examiner ought to difficulty a Recognize of Allowance, and include things like the motives for allowance as desired. On the other hand, if the examiner deems that the responses do not prevail over all superb rejections, and issues a remaining Workplace Action, the minimal waiver under the Pilot is terminated.
It really should be famous that due to the fact the issuance of a remaining Workplace Action is thought of a final disposition resulting in termination of the minimal waiver beneath the Pilot, there are no adjustments to just after-closing apply less than this Pilot.
Overcoming prior artwork (i.e., non-SME) rejections could obviate, or render moot, Action 2B SME rejections, as if the creation is located to be novel and non-evident it may perhaps get over the “substantially more” requirement of Stage 2B examination of a 101 rejection. In these instances, it is worthwhile, in terms of time and charge effectiveness, to use the Pilot system to first concentration arguments on beating the prior art rejections. This sort of a situation may perhaps manifest when, for example, the SME rejection focuses entirely on the conventionality or routineness of the added elements, and the arguments in opposition to the prior artwork rejections make it basic that the added components are novel and non-clear.
The MPEP clarifies that the Move 2A of the SME examination “specifically excludes thought of regardless of whether the more components stand for nicely-comprehended, regimen, regular action … Extra factors that symbolize nicely-recognized, program, conventional action could combine a recited judicial exception into a sensible software.” Therefore, the precise exclusion of programs with Step 2A (but not Action 2B) rejections from this Pilot method seems to suggest a perception on aspect of the PTO that beating prior art rejections would logically final result in the summary that the inventive notion in the declare is, in actuality, not common and quantities to much more than what is disclosed in the prior art.
Therefore, in predicaments where by an applicant thinks that Stage 2B SME rejections are inappropriate because the examiner improperly deems inventive concept as being regular or as not amounting to substantially a lot more, the applicant may perhaps want to concentrate their endeavours on beating prior art rejections and in the procedure render the Step 2B SME rejections moot.
In addition, if all the non-SME issues are resolved during prosecution, and only SME rejections—in particular Phase 2B rejections—are managed, practitioners may perhaps make your mind up to attraction only the SME question, thus simplifying the appeal system.
In addition, quite a few practitioners, at the very least anecdotally, seem to presently be focusing on beating prior art rejections, as conquering all prior artwork rejections might soften examiners’ stance on the SME problems.
In summary, even though practitioners will have to make a decision whether it is worthwhile accepting an invitation to take part in the Pilot on a circumstance-by-case foundation, claims in which it is reasonably a lot easier to argue that the added components are not traditional or routine might be greater suited for this Pilot.