USPTO rolling out a Deferred Subject Matter Eligibility Response (DSMER) Pilot Program

The United States Patent and Trademark Office (USPTO) examines pending applications using a principle called “Compact Prosecution.” Under Compact Prosecution, the USPTO conducts a search and provides office actions that explains the office’s position on each essential element of prosecution (e.g., addressing informalities, providing rejections under 35 U.S.C. §§ 101, 102, 103, and 112, acknowledging patentable subject matter, etc.) instead of prosecuting each requirement sequentially. The applicant must then respond to every raised rejection. The goal of Compact Prosecution is to reduce the number of office actions required to come to a resolution regarding the application (i.e., an allowance or an abandonment).

The Patent Office recently announced a new limited Deferred Subject Matter Eligibility Response (DSMER) Pilot Program, which modifies Compact Prosecution for certain applications. For participating applications, the applicant may defer, in full or in part, responding to any particular subject matter eligibility rejection until all other outstanding rejections are withdrawn or a final disposition of the application[1]. Once all other outstanding rejections are withdrawn or a final disposition is reached, the applicant must respond to the subject matter eligibility rejections. Additionally, to comply with the pilot program, the applicant’s response must fully respond to all other pending rejections.

As currently constituted, participation in the DSMER Pilot Program is by invitation only. The applicants with eligible applications will be invited to participate in the DSMER Pilot Program between February 1, 2022, and July 30, 2022. To qualify to be invited, the application will have to meet the procedural criteria and have claims that meet the patentability-related criteria. To meet the procedural requirements:

• The application must be an original non-provisional application (i.e., not a continuing application) that may only claim priority to a provisional application, an international application under the Patent Cooperation Treaty, or a foreign application.
• The application must not have been granted a special status to advance the application out of turn or provide fast-track examination.

To meet the eligibility criteria, the application must be subject to subject matter eligibility rejection and a non-subject matter rejection in the first office action.

If an application is eligible, an invitation to participate will be included in the first office action on the merits. If an invited applicant wants to participate, the applicant must accept in the manner specified upon filing a response to the first office action. Once the invitation is accepted, the applicant cannot withdraw a participating application from the pilot program. However, applicants may choose not to avail themselves of the program's benefit and may voluntarily reply to any outstanding subject matter eligibility rejection. In some rare circumstances, the USPTO will remove an application from the DSMER Pilot Program and will inform the applicant of the removal.

Recommendation

Applicants should seriously consider accepting an invitation to participate in the DSMER Pilot Program. In most circumstances, the participating applications will have one office action response to resolve the non-subject matter eligibility rejections before the application must respond to the subject matter eligibility rejection(s). In some applications, a large portion of the time and cost of preparing a response is responding to a subject matter eligibility rejection. Thus, participation in the pilot program can defer some costs to a second office action when the applicant wants to gauge the effectiveness of the responses to novelty and obviousness rejections before incurring the cost of preparing the response to the subject eligibility rejections.