Mediocre Results so Far for Deferred Subject Matter Eligibility Response Pilot

The U.S. Patent and Trademark Office (USPTO) today held a “USPTO Hour” webinar in which it shared the results thus far of its 2022 pilot program, the “Deferred Subject Matter Eligibility Response (DSMER) Pilot.”

The DSMER Pilot was announced in January 2022 in response to a 2021 letter sent to the Office by Senators Thom Tillis (R-NC) and Tom Cotton (R-AR) asking then-interim Director Drew Hirshfeld to “initiate a pilot program directing examiners to apply a sequenced approach to patent examination,” rather than the traditional “compact approach.”

Under the pilot, participants are “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 subject matter eligibility (SME) and non-SME rejections—received invitations to participate in the pilot.

According to today’s webinar, 726 invitations to participate were sent and the acceptance rate was 28%. The largest numbers of invitations were sent from Tech Centers 3600 (business methods) and 2100 (computer architecture/ AI).

Examiners also participated on a voluntary basis; 600 examiners volunteered to be in the pilot, all primary examiners, and all concentrated in areas that see eligibility issues fairly frequently, said Daniel Sullivan, Director of Technology Center 1600 (biotech and organic chemistry).

According to 167 examiner surveys conducted with the participating examiners, the applicant’s response to the non-eligibility rejections after the non-final Office action overcome or led the examiner to withdraw all of the 101 subject matter eligibility rejections in 22% of cases. However, these figures were not as high in areas “where it’s needed most,” like AI and business methods, said Sullivan.

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As for the effect on on prosecution efficiency, a larger percentage of DSMER applications still had not reached final disposal at 18 months compared to the control group, and they were more likely to include at least one Request for Continued Examination. It also took more office actions to get to allowance or abandonment. “We didn’t see any evidence of efficiency,” added Sullivan.

When asked what impact deferring eligibility response had on examiners’ evaluation of subject matter eligibility issues, 51% said none.

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Assistant Commissioner for Patents Brian Hanlon clarified in the Q&A that the pilot’s goal is not to reduce the number of SME rejections but just to conduct examination in a more sequenced manner, as requested by the senators.

Sullivan said the next steps for the pilot are to continue to gather feedback and encouraged stakeholders to submit suggestions and comments to [email protected].

The broader topic of the USPTO Hour was “Congressional inquiries about Patents topics” and it was conducted by the Office of Governmental Affairs and our Patents Business Unit.