USPTO’s Pilot Program for Deferring Subject Matter Eligibility Response | Sheppard Mullin Richter & Hampton LLP
- Introduction
On January 6, 2022, the U.S. Patent and Trademark Place of work (USPTO) introduced a Deferred Subject matter Make a difference Eligibility Reaction Pilot System (the “DSMER Program”). We supply a quick overview of this application.
Now, the USPTO applies a “compact prosecution approach” in analyzing patent applications. Below this tactic, an examiner will establish all relevant grounds for objections and rejections in each individual Business Action. An applicant is necessary to tackle all these objections and rejections in just one response. A reaction that fails to fulfill this prerequisite may possibly be considered “not absolutely responsive” and be turned down by the USPTO.
The DSMER Plan will allow an applicant to hold off responding to just one or much more Subject Subject Eligibility (SME) rejections beneath 35 U.S.C. § 101 until the before of the closing disposition of the application, or the withdrawal or obviation of all other non-SME rejections. For illustration, for responding to a non-closing Office environment Motion that has lifted a rejection less than 35 U.S.C. §101 (an SME rejection) and a rejection under 35 U.S.C. §102 (a non-SME rejection), the applicant may possibly opt for to deal with only the §102 rejection and defer addressing the §101 rejection.
- Eligibility and Participation
A patent application requirements to fulfill the following criteria to be eligible for the DSMER Method:
(a) the software is an first nonprovisional utility software or countrywide phase of an worldwide software
(b) the application does not assert the profit of the earlier submitting date of any prior nonprovisional application
(c) the application has not been highly developed out of change and
(d) the initial Office environment Motion on the deserves incorporates equally SME and non-SME rejections.
In accordance to problems (a) and (b), a continuation/divisional application will be ineligible to the DSMER Program since it claims precedence to a further nonprovisional application (its guardian application). On the other hand, a countrywide stage application that promises priority to an worldwide application (i.e., a PCT software) or an software that promises priority to a provisional application is qualified.
In accordance to ailment (c), an application that is granted a particular standing for expedited processing, such as underneath Observe One particular or Patent Prosecution Highway (PPH), is ineligible to the DSMER Software.
In accordance to ailment (d), the DSMER Application is only open to apps governed by the SME needs (the prerequisites of 35 U.S.C. §101). Plant applications and style and design programs are excluded as they are not ruled by the SME needs.
At this time, participation in the DSMER Method is by invitation only. If an software fulfills the eligibility requirements, the applicant might obtain an invitation to take part. The invitation will be provided in the first Office Motion on the merits. An applicant acquiring an invitation could select to settle for or decrease the invitation. An applicant who accepts the invitation desires to file a request form PTO/SB/456 concurrently with a well timed response to the initially Place of work Action on the deserves to point out the acceptance.
- Length of the DSMER Method
The DSMER Method is set to run from February 1, 2022 to July 30, 2022. Through this time period, candidates of suitable applications may possibly obtain invites to take part in the DSMER Program.
- Discussions
Underneath the DSMER Program, if a non-ultimate Place of work Action has equally SME and non-SME rejections, the applicant can reply only to the non-SME rejections. Even with the SME concerns deferred, the examiner will nonetheless take into consideration whether an applicant’s response to non-SME rejections overcome the SME rejections. The SME concerns may well be resolved even though enjoyable the non-SME specifications (this is truly generally the circumstance). This enhances prosecution effectiveness, assists candidates help save time and price tag, and also keeps the file history clean up. Even so, if the SME troubles are not fixed just after thinking about the applicant’s reaction, the examiner could challenge a final Office Action irrespective whether any non-SME rejection remains. In this state of affairs, the applicant loses a possibility to reply to the SME rejection at the non-last Business office Action stage and have to offer with it at the ultimate Workplace Motion stage. In addition, since non-SME difficulties and SME problems are addressed sequentially relatively than concurrently, the complete prosecution time for these apps may possibly be prolonged.
