USPTO Launches Program To Defer Subject Matter Eligibility Responses – Intellectual Property


United States: 

USPTO Launches Application To Defer Topic Make any difference Eligibility Responses


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Beginning February 1, 2022, the U.S. Patent and Trademark Office environment
(USPTO) will start inviting selected candidates to participate in a
pilot method to defer matter matter
eligibility evaluation right up until ultimate disposition of the application
or all other rejections have been tackled. The idea driving the
system seems to be that satisfaction of other patentability
disorders (e.g., novelty, non-obviousness, and composed
description) may perhaps solve topic make any difference eligibility concerns as well.
Continuation and divisional programs, reissue apps, and
apps accorded specific position (these as Speedy- Track
applications) are not eligible for the program. Apps need to
elevate each matter matter eligibility rejections and non-matter
subject eligibility rejections to be qualified.
Collaborating examiners may perhaps invite the applicant of a
potential pilot software to take part in the pilot plan
by like a kind paragraph in the initially Office environment action on the
merits. An applicant can then elect to accept the invitation
and take part in the method or decrease. To acknowledge the
invitation, the applicant will have to file type PTO/SB/456. At the time in the
application, the Examiner will assess all bases of patentability,
including subject subject eligibility, in each place of work motion. In
reaction, the applicant is ready to defer presenting arguments,
proof, or amendments in response to the subject subject
eligibility rejection(s) right until the previously of closing disposition of
the software or the withdrawal or obviation of all other
excellent rejections. “Last disposition” of the
application is the to start with of (1) mailing of a observe of allowance,
(2) mailing of a final Office environment action, (3) filing of a see of
appeal, (4) filing of a ask for for ongoing examination (RCE), or
(5) abandonment of the software.
It will be appealing to see how lots of candidates elect to enter
the plan and whether or not it meaningfully impacts patent quality or
time to issuance. The method nevertheless calls for examiners to assess
issue make a difference eligibility early on in prosecution. However,
applicants might benefit from the plan by keeping away from wasted time and
energy wading into arguments in the sometimes murky area of subject matter
issue eligibility. In its place, applicants can concentration their prosecution
endeavours on additional simple novelty and non-obviousness
analyses, which may perhaps also solve the topic subject eligibility
difficulty.
Read much more about the system in this article.
Mainly because of the generality of this update, the data
delivered herein may well not be relevant in all scenarios and ought to
not be acted on devoid of distinct legal suggestions dependent on specific
scenarios.
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