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Volume XII, Number 148

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USPTO’s Pilot Program for Deferring Subject Matter Eligibility Response

Introduction

On January 6, 2022, the U.S. Patent and Trademark Office (USPTO) announced a Deferred Subject Matter Eligibility Response Pilot Program (the “DSMER Program”). We provide a brief overview of this program.

Currently, the USPTO applies a “compact prosecution approach” in examining patent applications. Under this approach, an examiner will identify all applicable grounds for objections and rejections in each Office Action. An applicant is required to address all these objections and rejections in one response. A response that fails to meet this requirement may be considered “not fully responsive” and be rejected by the USPTO.

The DSMER Program allows an applicant to delay responding to one or more Subject Matter Eligibility (SME) rejections under 35 U.S.C. § 101 until the earlier of the final disposition of the application, or the withdrawal or obviation of all other non-SME rejections.  For example, for responding to a non-final Office Action that has raised a rejection under 35 U.S.C. §101 (an SME rejection) and a rejection under 35 U.S.C. §102 (a non-SME rejection), the applicant may choose to address only the §102 rejection and defer addressing the §101 rejection.

Eligibility and Participation

A patent application needs to meet the following criteria to be eligible for the DSMER Program:

(a) the application is an original nonprovisional utility application or national stage of an international application;

(b) the application does not claim the benefit of the earlier filing date of any prior nonprovisional application;

(c) the application has not been advanced out of turn; and

(d) the first Office Action on the merits includes both SME and non-SME rejections.

According to conditions (a) and (b), a continuation/divisional application will be ineligible to the DSMER Program since it claims priority to another nonprovisional application (its parent application). On the other hand, a national stage application that claims priority to an international application (i.e., a PCT application) or an application that claims priority to a provisional application is eligible.

According to condition (c), an application that is granted a special status for expedited processing, such as under Track One or Patent Prosecution Highway (PPH), is ineligible to the DSMER Program.

According to condition (d), the DSMER Program is only open to applications governed by the SME requirements (the requirements of 35 U.S.C. §101). Plant applications and design applications are excluded as they are not governed by the SME requirements.

At this time, participation in the DSMER Program is by invitation only. If an application meets the eligibility criteria, the applicant may receive an invitation to participate. The invitation will be included in the first Office Action on the merits. An applicant receiving an invitation may choose to accept or decline the invitation. An applicant who accepts the invitation needs to file a request form PTO/SB/456 concurrently with a timely response to the first Office Action on the merits to indicate the acceptance.

Duration of the DSMER Program

The DSMER Program is set to run from February 1, 2022 to July 30, 2022. During this period, applicants of eligible applications may receive invitations to participate in the DSMER Program.

Discussions

Under the DSMER Program, if a non-final Office Action has both SME and non-SME rejections, the applicant can respond only to the non-SME rejections. Even with the SME issues deferred, the examiner will still consider whether an applicant’s response to non-SME rejections overcome the SME rejections. The SME issues may be resolved while satisfying the non-SME requirements (this is actually often the case). This improves prosecution efficiency, helps applicants save time and cost, and also keeps the file history clean. However, if the SME issues are not resolved after considering the applicant’s response, the examiner may issue a final Office Action regardless whether any non-SME rejection remains. In this scenario, the applicant loses a chance to respond to the SME rejection at the non-final Office Action stage and have to deal with it at the final Office Action stage. Additionally, since non-SME issues and SME issues are addressed sequentially rather than concurrently, the total prosecution time for those applications may be prolonged.

Copyright © 2022, Sheppard Mullin Richter & Hampton LLP.National Law Review, Volume XII, Number 24
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About this Author

Jing Zheng Intellectual Property Lawyer Sheppard Mullin Law Firm
Attorney

Dr. Jing Zheng is an attorney in the Intellectual Property Practice Group in the firm's Silicon Valley office.

Areas of Practice

Dr. Zheng’s practice areas include patent prosecution for semiconductor device and manufacturing process, computer software, digital/analog circuit design, and consumer electronics device. As an engineer-turned-attorney, Dr. Zheng’s extensive technical background and industrial experience enable him to advise a client’s IP issue from a tech insider’s perspective.

Prior to entering law practice, Dr. Zheng worked as a software/...

650.352.1964
Yunlai Zha Technical Specialist Sheppard Mullin
Technical Specialist

Dr. Yunlai Zha is a technical specialist in the Intellectual Property Practice Group in the firm's Silicon Valley office.

Areas of Practice

Yunlai's practice focuses primarily on prosecution of patent applications related to blockchain, machine learning, artificial intelligence, semiconductors, optical devices, nano devices, telecommunications, medical devices, robotics, and clean energy and renewables. He routinely interviews inventors to develop invention disclosures and draft new patent applications in the broad range of complex technologies.

...

650.815.2604
Weiguo (Will) Chen Intellectual Property Attorney Sheppard Mullin Silicon Valley, CA
Partner

Will Chen is a partner in the Intellectual Property Group in the firm's Silicon Valley office.

Areas of Practice

Will advises clients in all areas of intellectual property law, including patent litigation, strategic patent portfolio development, patent office post-grant validity trials, patent and technology licensing, and patent infringement and validity opinions.

Will has extensive experience in helping high-tech companies in Silicon Valley and China on building comprehensive patent portfolios and developing sophisticated international patent...

650-815-2692
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