Publication

Recently, the United States Patent and Trademark Office (“USPTO”) announced a new Deferred Subject Matter Eligibility Response Pilot Program (“DSMER Program”) for utility patent applications. The purpose of the DSMER Program is to evaluate the benefits of allowing applicants to defer responding to 35 USC § 101 rejections (also commonly referred to as “Alice,” “subject matter,” or “abstract idea” rejections) during prosecution.

The DSMER Program runs from February 1, 2022, until July 30, 2022. The USPTO is accepting comments on the program through March 7, 2022. The USPTO may extend, terminate, or alter the terms of the DSMER Program depending on internal resources and the effectiveness of the program.

Applicants may participate in the DSMER Program by invitation only. An applicant may be sent an invitation to participate in the DSMER Program by the USPTO when an application meets the following criteria:

1. The application is an original non-provisional utility application or a national stage of an international application;
2. The application does not claim the benefit of the earlier filing date of any prior non-provisional applications; 
3. The application has not been advanced out of turn (accorded special status); and
4. The first office action on the merits for the application includes both claim rejections under § 101 and other rejections (e.g., rejections under §§ 102, 103, or 112).

An applicant accepting an invitation to participate in the DSMER Program is granted a limited waiver of 37 CFR §1.111(b) (requiring an applicant to “reply to every ground of objection and rejection” in an Office action) with respect to the § 101 rejections. The limited waiver permits the applicant to defer presenting arguments or amendments in response to the § 101 rejections until the earlier of a “final disposition” of the participating application (e.g., the mailing of a final Office action, the filing of a Request for Continued Examination, or the filing of a Notice of Appeal) or the withdrawal of all “other outstanding rejections.” Other than the limited deferral of responding to the § 101 rejections, the applicant must fully respond to the Office action, and the application will undergo normal prosecution.

The DSMER Program is a response to a request by two U.S. Senators who expressed concern that current procedures require premature analysis of subject matter eligibility. The Senators felt that addressing rejections directed to novelty, obviousness, indefiniteness, and the like “inevitably brought the claims into compliance with Section 101 as well.” Accordingly, one aim of the DSMER Program is to test the theory that deferring patent-eligibility analysis until other rejections are resolved results in more efficient patent prosecution.

More information about the DSMER Program is available in the Federal Register Notice announcing the program and on the DSMER pilot program page of the USPTO website.

Whether an invitation to participate in the DSMER Program should be accepted by an applicant will depend on the specifics of the application and the client’s needs. The Intellectual Property team at Michael Best is available to help you decide how to respond to an invitation to participate in the DSMER Pilot Program.