USPTO’s Pilot Program for Deferring Topic Matter Eligibility Response


  1. Introduction

On January 6, 2022, the U.S. Patent and Trademark Workplace (USPTO) introduced a Deferred Topic Matter Eligibility Response Pilot Program (the “DSMER Program”). We offer a short overview of this program.

Presently, the USPTO applies a “compact prosecution strategy” in inspecting patent functions. Underneath this strategy, an examiner will establish all relevant grounds for objections and rejections in every Workplace Motion. An applicant is required to handle all these objections and rejections in a single response. A response that fails to satisfy this requirement could also be thought-about “not totally responsive” and be rejected by the USPTO.

The DSMER Program permits an applicant to delay responding to a number of Topic Matter Eligibility (SME) rejections underneath 35 U.S.C. § 101 till the sooner of the ultimate disposition of the appliance, or the withdrawal or obviation of all different non-SME rejections.  For instance, for responding to a non-final Workplace Motion that has raised a rejection underneath 35 U.S.C. §101 (an SME rejection) and a rejection underneath 35 U.S.C. §102 (a non-SME rejection), the applicant might select to handle solely the §102 rejection and defer addressing the §101 rejection.

  1. Eligibility and Participation

A patent utility wants to satisfy the next standards to be eligible for the DSMER Program:

(a) the appliance is an authentic nonprovisional utility utility or nationwide stage of a world utility;

(b) the appliance doesn’t declare the good thing about the sooner submitting date of any prior nonprovisional utility;

(c) the appliance has not been superior out of flip; and

(d) the primary Workplace Motion on the deserves contains each SME and non-SME rejections.

In keeping with situations (a) and (b), a continuation/divisional utility will probably be ineligible to the DSMER Program because it claims precedence to a different nonprovisional utility (its father or mother utility). Then again, a nationwide stage utility that claims precedence to a world utility (i.e., a PCT utility) or an utility that claims precedence to a provisional utility is eligible.

In keeping with situation (c), an utility that’s granted a particular standing for expedited processing, similar to underneath Monitor One or Patent Prosecution Freeway (PPH), is ineligible to the DSMER Program.

In keeping with situation (d), the DSMER Program is just open to functions ruled by the SME necessities (the necessities of 35 U.S.C. §101). Plant functions and design functions are excluded as they aren’t ruled by the SME necessities.

Right now, participation within the DSMER Program is by invitation solely. If an utility meets the eligibility standards, the applicant might obtain an invite to take part. The invitation will probably be included within the first Workplace Motion on the deserves. An applicant receiving an invite might select to just accept or decline the invitation. An applicant who accepts the invitation must file a request kind PTO/SB/456 concurrently with a well timed response to the primary Workplace Motion on the deserves to point the acceptance.

  1. Period of the DSMER Program

The DSMER Program is about to run from February 1, 2022 to July 30, 2022. Throughout this era, candidates of eligible functions might obtain invites to take part within the DSMER Program.

  1. Discussions

Underneath the DSMER Program, if a non-final Workplace Motion has each SME and non-SME rejections, the applicant can reply solely to the non-SME rejections. Even with the SME points deferred, the examiner will nonetheless take into account whether or not an applicant’s response to non-SME rejections overcome the SME rejections. The SME points could also be resolved whereas satisfying the non-SME necessities (that is really usually the case). This improves prosecution effectivity, helps candidates save time and value, and likewise retains the file historical past clear. Nevertheless, if the SME points will not be resolved after contemplating the applicant’s response, the examiner might problem a ultimate Workplace Motion regardless whether or not any non-SME rejection stays. On this situation, the applicant loses an opportunity to reply to the SME rejection on the non-final Workplace Motion stage and need to cope with it on the ultimate Workplace Motion stage. Moreover, since non-SME points and SME points are addressed sequentially relatively than concurrently, the overall prosecution time for these functions could also be extended.

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