On January 6, 2022, the U.S. Patent and Trademark Office (USPTO) announced the implementation of an invitation-only pilot program that would permit an applicant to defer responding to subject matter eligibility (SME) rejections under 35 U.S.C. § 101 in applications accepted into the pilot program and under certain conditions. The USPTO calls this the Deferred Subject Matter Eligibility Response (DSMER) Pilot Program. The DSMER Pilot Program is designed to help the USPTO evaluate whether permitting deferring responses to SME rejections would improve examination efficiency and quality, particularly if Applicants’ responses to non-SME rejections would also overcome SME rejections.
According to the USPTO, invitations to the DSMER Pilot Program will be issued from February 1 – July 30, 2022 in a first Office Action on the merits in applications identified as prospective pilot applications. Applicants may not request the USPTO to participate in the DSMER Pilot Program.
The first Office Action in prospective pilot applications must include rejections for both lack of SME and other patentability criteria (e.g., anticipation, and/or obviousness, and/or indefiniteness, etc.). If the Applicant accepts the invitation to participate in the DSMER Pilot Program, the Applicant may “defer presenting arguments, evidence, or amendments in response to the SME rejection(s) until the earlier of final disposition of the participating application or the withdrawal or obviation of all other outstanding rejections.”
The USPTO provides a hypothetical example of an application accepted into the DSMER Pilot Program, in which the first Office Action includes one anticipation rejection and two SME rejections. In this example, the USPTO notes that any of the following options would constitute a valid response to the Office Action: (a) providing arguments and/or amendments in response to the anticipation rejection but remaining silent as to the two SME rejections; (b) providing arguments and/or amendments in response to the anticipation rejection and to one of the SME rejections but remaining silent as to the other SME rejection; and (c) providing arguments and/or amendments in response to all three rejections. However, if the next action is a Final Office Action, the Applicant cannot continue to remain silent as to any remaining SME rejection(s).
There are many details, criteria, caveats, and nuances pertinent to the DSMER Pilot Program, as explained in the Federal Register notice detailing the announcement, available here: https://www.govinfo.gov/content/pkg/FR-2022-01-06/pdf/2021-28473.pdf
The USPTO provides additional information on the DSMER Pilot Program on its website here: https://www.uspto.gov/patents/initiatives/patent-application-initiatives/deferred-subject-matter-eligibility-response
We will monitor our clients’ applications for invitations to participate in the DSMER Pilot Program and, if necessary, provide application-specific recommendations at the appropriate time.