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

In 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 www.regulations.gov.