TAKEAWAY: The USPTO has implemented a pilot program allowing applicants to defer a subject matter eligibility rejection until final disposition of the application or withdrawal of all other rejections.
The USPTO recently implemented a new Deferred Subject Matter Eligibility Response (DSMER) Pilot Program, allowing applicants to defer a subject matter eligibility rejection under Section 101. The pilot program seeks to investigate effects on examination efficiency and patent quality when examiners assess other patentability grounds (novelty, inventiveness, clarity, etc.) before subject matter eligibility.
Under the DSMER pilot program, the applicant is granted a limited waiver of 37 C.F.R. § 1.111(b) requiring a response to every ground of objection in an office action. The applicant can defer arguing a 101 rejection until the earlier of final disposition of the application (e.g., a final rejection or an allowance with a concurrent 101 rejection) or the withdrawal or obviation of all other outstanding rejections.
The DSMER pilot program is by invitation only. The USPTO intends to mail invitations starting February 1, 2022. In order to participate in the DSMER pilot program, the application must meet the following criteria:
- the application is an original nonprovisional utility application or national stage of an international application;
- the application does not claim the benefit of the earlier filing date of any prior nonprovisional application;
- the application has not been advanced out of turn (accorded special status, e.g., via a granted Track One prioritized examination request); and
- the first office action on the merits includes both subject matter eligibility rejections among other rejections.
An applicant invited to participate in the DSMER pilot program may participate by electronically filing a completed request form PTO/SB/456 concurrently with a timely response to the first office action. There is no fee to participate. The DSMER pilot program is scheduled to end on July 30, 2022.
Please see the Federal Register Notice for additional information.