IP Practice Vlogs: The USPTO’s New Pilot Program – Deferred Subject Matter Eligibility Response

IPWatchdog is happy to introduce the IP Practice Vlogs by Global IP Counselors, a series of practice videos for the US IP practitioner. Each video is designed to be under ten minutes in length and aims to focus on practicing before the USPTO and the Federal Circuit. Additionally, the series brings to light key differences in prosecution practice before the USPTO versus the other major patent offices around the world, particularly with respect to critical emerging technologies, such as AI, cloud data and cryptocurrency.

Proffered by Senator Thom Tillis (R-NC) in the interest of expediting patent prosecution for those applications that receive Section 101 rejections, under the new Deferred Subject Matter Eligibility (DSMER) program, eligible applicants who receive a subject matter eligibility rejection with prior art rejection(s) or indefiniteness rejection(s) can defer substantively responding to the Section 101 rejection until all other rejections have been withdrawn. This program began on February 1 and will last until July 30 of this year. The U.S. Patent and Trademark Office (USPTO) will notify eligible applicants in the first Office Action on the merits. The applicant can then choose to participate in the program by filling out a form paragraph.

The DSMER program is a limited waiver on responding to Section 101 rejections, meaning the applicant does not have to present evidence, arguments or amendments to overcome the Section 101 rejection.  The applicant needs to only address the Section 101 rejection by referencing the applicant’s participation in this pilot program.

The limited waiver lasts until the occurrence of the earlier of two events: 1) final disposition of the pending application, or 2) the withdrawal or obviation of all other outstanding rejections.

“Final disposition” occurs upon the earliest of the following:

  • A Notice of Allowance (yay!)
  • A final Office Action
  • RCE
  • Notice of Appeal, or
  • Abandonment (?)

“Withdrawal or obviation of other outstanding rejections” occurs when the applicant has successfully overcome all non-Section 101 rejections such that the Section 101 rejection is the only rejection remaining. At this point, the applicant is obligated to substantively respond to the Section 101 rejection.

Watch the latest IP Practice Vlog by Global IP Counselors for more on this program.


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Join the Discussion

4 comments so far.

  • [Avatar for Model 101]
    Model 101
    April 11, 2022 08:10 pm

    Also…Senator Tillis…you can do more than this to solve this mess.

    Figure it out!

    You work for us!

    191 is unconditional. (Loudly)

  • [Avatar for Model 101]
    Model 101
    April 11, 2022 08:05 pm

    What about the rest of us?

    I demand that all patents get the same treatment as the pending applications. 101 is unconditional, and I also demand that all patents that were invalidated by 101 get the benefit of due process.

    What is everyone afraid of?

    Why isn’t this happening right now?

    What is everyone waiting for?

  • [Avatar for Model 101]
    Model 101
    April 11, 2022 03:25 pm

    Should make this available to all patents where 101 killed the patents

  • [Avatar for Anon]
    April 11, 2022 08:30 am

    Would be interested in feedback from anyone considering opting in to this program.

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