USPTO Delivers on Senators’ Request for Deferred Subject Matter Eligibility Response Pilot

“The Office is hopeful that the Deferred Subject Matter Eligibility Response pilot will help to improve examination efficiency and patent quality, particularly in certain technology areas.” March 2021, Senators Thom Tillis (R-NC) and Tom Cotton (R-AR) asked interim Director of the United States Patent and Trademark Office (USPTO) Drew Hirshfeld to “initiate a pilot program directing examiners to apply a sequenced approach to patent examination,” rather than the traditional “compact approach.” In response to that request, the USPTO today announced a “Deferred Subject Matter Eligibility Response (DSMER) Pilot Program” for nonprovisional patent applications, which is set to launch on February 1, 2022. According to the Federal Register Notice, pilot participants will be “permitted to defer responding to [subject matter eligibility] SME rejections until the earlier of final disposition of the application, or the withdrawal or obviation of all other outstanding rejections.” Applicants with qualifying applications—including a requirement that the first Office action on the merits makes both SME and non-SME rejections—will receive invitations to participate in the pilot.

In their March letter, Tillis and Cotton told Hirshfeld that such a pilot could help to unmuddy the waters surrounding Section 101 analysis, which is less well-developed than other sections of patent law relevant to examination, such as Sections 102, 103 and 112. The senators explained:

By conducting an inherently vague and subjective analysis of eligibility early in the examination process, examiners may be spending inordinate time on Section 101 at a time when it is difficult or impossible to conduct a meaningful examination under Section 101, at the expense of the more rigorous analysis and precise and thoughtful work that can be conducted at the outset of examination under Sections 102, 103, and 112.

According to today’s Notice, under the pilot, a participating applicant must still respond to every office action issued, but can defer responding to a Section 101 rejection. “The DSMER Pilot Program thus deviates from traditional compact prosecution, because participating applicants may defer engaging with examiners on SME issues until after non-SME issues have been addressed,” says the Notice.

The Office is hopeful that the pilot will help to improve examination efficiency and patent quality, “particularly in certain technology areas.”

Applications must meet the following conditions to qualify for an invitation to participate in the pilot:

  • The application is assigned to a “participating examiner,” which is defined in Section I.A. of the Federal Register Notice as “primary examiners across the patent examining corps,” though examiner participation is not mandatory. However, “the USPTO will make efforts to ensure that a representative number of primary examiners are participating from each applicable Technology Center,” says the Notice.
  • The application meets the procedural criteria, defined in Section I.B. of the Notice as “an original nonprovisional utility application filed under 35 U.S.C. 111(a) or an international application that has entered the national stage under 35 U.S.C. 371, and must not claim the benefit of the earlier filing date, under 35 U.S.C. 120 or 121, of any prior nonprovisional application.” Applications that have been advanced out of turn (special status applications) do not qualify for the pilot, though applications that have gone through the pilot may participate in expedited processing programs after final disposition.
  • The claims “raise both SME issues and non-SME issues that necessitate rejections, and the first Office action on the merits must make both SME and non-SME rejections.”

Qualifying applicants will receive an invitation form paragraph in their first Office action on the merits. To accept the invitation, applicants should file a properly completed request form PTO/SB/456 along with their response to the first Office action on the merits.

Once accepted into the pilot, applicants can choose not to defer response to SME rejections. “Such action does not remove the application from the pilot program or terminate the waiver for that application,” explains the Notice.

Upon final disposition of the application, the limited waiver of 37 CFR 1.111(b) provided by the pilot program will end and the applicant must respond to any outstanding SME rejection(s). If the applicant chooses to file an after-final response or a Notice of Appeal, the application will be treated in accordance with normal procedures. Furthermore, “[a]pplicants are cautioned that participation in this program is not, in itself, a good and sufficient reason why an amendment or evidence was not earlier presented under 37 CFR 1.116 or 41.33,” says the Notice.

More information about the pilot program is available here, and comments are due by March 7, 2022 via the Federal eRulemaking Portal at



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Join the Discussion

7 comments so far.

  • [Avatar for Anon]
    January 7, 2022 04:21 pm

    Pro Say,

    I would prefer to NOT ride the wooden horse into the city, thank you.

    We can though “give it a kick” and test out hidden compartments prior to bringing it in. One such “test” is as I provided above in response to Primary Examiner.

  • [Avatar for Anon]
    January 7, 2022 04:17 pm

    Primary examiner,

    Along your view, I would have recommended a different implementation — one that actually comports with the Tillis letter (the currently promulgated implementation does not effectively do that).

    The 2019 Patent Eligibility Guidelines sought to provide off-ramps for Examiners to avoid the Gordian Knot created by the Court (and the courts). Abiding by Sen. Tillis’s request could also create an effective off-ramp by stopping at the identification of a category step, instead of having examiners still run through a full eligibility rejection (and then allow applicant’s to ‘pause’ on that rejection).

    Tillis wanted examiners to actually stop and LISTEN to applicants as the applicants pointed out how overcoming the other statutory rejections under prior art sections and Section 112 INFORMED just what the innovation was.

    The current promulgation absolutely ignores that and instead not only continues to have an examiner come to their conclusion, but then lets that conclusion SET in place.

    It would be far better off to NOT have the Examiner continue through with a flawed eligibility examination in the first place. Save time, Save the Examiner from having to ‘undo’ their stance. Actually BE informed (as Tillis wants) on the aspects of an innovation that may well in fact provide that “something more” that currently examiners refuse to see.

    And a note to other practitioners: by all means take this and expand on it — let the Patent Office know that to really adhere to what Senator Tillis asked for is to NOT make a flawed eligibility decision, and then have to backtrack from that position, but instead, to LISTEN up front.

  • [Avatar for Pro Say]
    Pro Say
    January 7, 2022 02:28 pm

    Anon, my friend:

    1. Belay your push back. It is only by some folks actually giving it a try — and seeing how things go — that we all can know whether or not the program is a good idea.

    Sorry, but everyone merely gazing at the large beautiful wooden horse . . . will never provide the information needed to determine whether the horse is worth bringing within the city walls . . .

    Only by the horse being ridden can this big question be answered.

    2. Of course I know the program is by invitation only. It is then — and only then — that the invitees will decide . . . who will go first.

    I do wonder if and when such “accepted the invitation” apps / files will be available for public access.

    Could be at least a few years before any trend/s can be discerned.

  • [Avatar for Anon]
    January 7, 2022 10:18 am

    Additionally – your question of “who wants to go first” MISSES the point that this party is by invitation only.

    Let’s see who the Office wants to have go first, eh?

  • [Avatar for Anon]
    January 7, 2022 10:17 am

    Pro Say,

    This is (yet another) area that I would push back on you that jumping at what is shiny and merely different does NOT mean “worth trying.”

    Let’s make sure first that this large beautiful wooden horse is worth bringing within the city walls.

  • [Avatar for Primary Examiner]
    Primary Examiner
    January 7, 2022 10:08 am

    Approach seems interesting.
    However, further improving, building on the 2019 PEG would be a more efficient approach, in my opinion.

  • [Avatar for Pro Say]
    Pro Say
    January 6, 2022 07:05 pm

    This examination approach is worth trying.

    That said; who wants to go first to see what happens?

    Anyone? Anyone?

    Bueller? Bueller?