Subject Matter

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

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United States: &#13
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USPTO Launches Application To Defer Topic Make any difference Eligibility Responses&#13

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Beginning February 1, 2022, the U.S. Patent and Trademark Office environment&#13
(USPTO) will start inviting selected candidates to participate in a&#13
pilot method to defer matter matter&#13
eligibility evaluation right up until ultimate disposition of the application&#13
or all other rejections have been tackled. The idea driving the&#13
system seems to be that satisfaction of other patentability&#13
disorders (e.g., novelty, non-obviousness, and composed&#13
description) may perhaps solve topic make any difference eligibility concerns as well.&#13
Continuation and divisional programs, reissue apps, and&#13
apps accorded specific position (these as Speedy- Track&#13
applications) are not eligible for the program. Apps need to&#13
elevate each matter matter eligibility rejections and non-matter&#13
subject eligibility rejections to be qualified. 

Collaborating examiners may perhaps invite the applicant of a&#13
potential pilot software to take part in the pilot plan&#13
by like a kind paragraph in the initially Office environment action on the&#13
merits. An applicant can then elect to accept the invitation&#13
and take part in the method or decrease. To acknowledge the&#13
invitation, the applicant will have to file type PTO/SB/456. At the time in the&#13
application, the Examiner will assess all bases of patentability,&#13
including subject subject eligibility, in each place of work motion. In&#13
reaction, the applicant is ready to defer presenting arguments,&#13
proof, or amendments in response to the subject subject&#13
eligibility rejection(s) right until the previously of closing disposition of&#13
the software or the withdrawal or obviation of all other&#13
excellent rejections. “Last disposition” of the&#13
application is the to start with of (1) mailing of a observe of allowance,&#13
(2) mailing of a final Office environment action, (3) filing of a see of&#13
appeal, (4) filing of a ask for for ongoing examination (RCE), or&#13
(5) abandonment of the software.

It will be appealing to see how lots of candidates elect to enter&#13
the plan and whether or not it meaningfully impacts patent quality or&#13
time to issuance. The method nevertheless calls for examiners to assess&#13
issue make a difference eligibility early on in prosecution. However,&#13
applicants might benefit from the plan by keeping away from wasted time and&#13
energy wading into arguments in the sometimes murky area of subject matter&#13
issue eligibility. In its place, applicants can concentration their prosecution&#13
endeavours on additional simple novelty and non-obviousness&#13
analyses, which may perhaps also solve the topic subject eligibility&#13
difficulty.

Read much more about the system in this article.

Mainly because of the generality of this update, the data&#13
delivered herein may well not be relevant in all scenarios and ought to&#13
not be acted on devoid of distinct legal suggestions dependent on specific&#13
scenarios.

© Morrison & Foerster LLP. All legal rights reserved

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