On January 6, 2022, the United States Patent and Trademark Office (USPTO) announced a new pilot program: The Deferred Subject Matter Eligibility Response (DSMER). This pilot program is designed to evaluate how deferred applicant responses to subject matter eligibility (SME) rejections affect examination efficiency and patent quality as compared to traditional compact prosecution practice.
Participation in this program is by invitation only. You may receive an invitation to participate if your application meets the criteria specified in the Federal Register notice announcing the program. These criteria include requirements that:
- 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 application has not been advanced out of turn (accorded special status); and
- the first office action on the merits makes both SME and non-SME rejections.
Invitations will be mailed during the period beginning on February 1, 2022 and ending on July 30, 2022. The invitation will be included as a form paragraph in the first office action on the merits, and will inform applicants on how to accept or decline the invitation.
To accept the invitation and participate in the program, applicants must electronically file a completed request form concurrently with a timely response to the first office action on the merits. If the applicant does not timely file a properly completed form, the application will not be entered into the program. When uploading the form, the applicant should select Document Description “Deferred Subject Matter Eligibility Response Pilot Request” (found under the “Pilot Programs” category) in order to ensure appropriate processing.
Participation in this pilot program provides the applicant with a limited waiver with respect to SME rejections in the participating application. In brief, although the applicant must still file a reply to every office action, the limited waiver 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, 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 be fully responsive to office actions, and the application will undergo the normal prosecution process.
Final disposition means the earliest of:
- mailing of a Notice of Allowance
- mailing of a final Office Action
- filing of a Notice of Appeal
- filing of an RCE
- abandonment of the application
As explained in the Federal Register Notice, “‘withdrawal or obviation of all other outstanding rejections’ refers to the situation in which a second or subsequent non-final Office action containing only the SME rejection(s) is mailed … because the applicant has overcome, or the examiner has withdrawn, all the non-SME rejections that were previously made.” After such a non-final office action has been issued, the applicant is required to address the SME rejection(s). However, the second office action is usually going to be a “final” office action.
The real potential benefit of the DSMER pilot program is the possibility that the arguments/amendments made to address the non-SME rejections overcome the SME rejections. However, the Federal Register Notice clarifies that even though the applicant does not have to address the SME rejection(s) directly, “the examiner will consider whether the applicant’s responses to other rejections (e.g., amendments made in response to an obviousness or indefiniteness rejection) overcome the SME rejection(s) of record.”
This means applicants who have participated in the pilot program may have to file an RCE to address the deferred SME rejection(s), even if they would be ready to appeal the non-SME rejections. In other words, applicants opting into the DSMER program bear the risk that the response to the non-SME rejections will not overcome the SME rejections, in which case they may be under the constraints of a final rejection when they first address the SME rejections. As such, this program will be most attractive when the SME rejections are plainly tied to non-SME rejections an applicant expects to overcome in a first response.
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Silvia Salvadori, PhD