USPTO DEFERRED SUBJECT MATTER ELIGIBILITY RESPONSE (DSMER) PILOT PROGRAM

By:  Mehdi Sheikerz, Partner

The USPTO has implemented a new pilot program, starting from February 1, 2022 and ending on July 30, 2022, to evaluate the effect of permitting applicants to defer responding to subject matter eligibility (SME) rejections in certain patent applications.

The Deferred Subject Matter Eligibility Response (DSMER) pilot program is designed to evaluate how deferred applicant responses to SME rejections affect examination efficiency and patent quality as compared to traditional compact prosecution practice by the Examiners.  The program was initiated in response to a letter from U.S. Senators Thom Tillis and Tom Cotton.

Participation in this program is by invitation.  The USPTO will notify an applicant of the invitation to participate if the application meets certain criteria that generally include:

• the application is an original nonprovisional utility application or national stage of an international application;
• the application does not claim the benefit of the earlier filing date of any prior nonprovisional application;
• the first office action on the merits makes both SME and non-SME rejections.

The invitation will be included as a form paragraph in the first office action on the merits, and will inform the applicant how to accept or decline the invitation.

The first Office action on the merits would still include both SME and non-SME rejections.  However, participation in this pilot program provides the applicant with a limited waiver of the requirement to submit a complete response to all the rejections under 37 CFR 1.111(b) with respect to the SME rejections.

In other words, the limited waiver of 37 CFR 1.111(b) permits the applicant to defer presenting arguments or amendments in response to the SME rejection(s) until the earlier of final disposition of the participating application (i.e., final office action), or the withdrawal or obviation of all other outstanding rejections. Other than this permitted deferral of responding to SME rejection(s), the applicant’s replies must still be fully responsive to office actions as in a normal prosecution process.

This pilot program may be beneficial from a prosecution efficiency standpoint until a final office action is issued, because the applicant may not need to submit additional particular arguments and/or claim amendments directed to SME rejections.  Therefore, the applicant potentially has the opportunity to place the application claims in condition for allowance by overcoming non-SME rejections that may result in overcoming SME rejections.  This is because the Examiner will consider whether the applicant’s responses to non-SME rejections also overcome the SME rejections.

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