introduction

On January 6, 2022, the United States Patent and Trademark Office (USPTO) announced a Deferred Subject Eligibility Response Pilot Program (the “DSMER Program”). We offer you 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 objection and rejection in each Office action. A candidate is required to respond to all such objections and rejections in one response. A response that does not meet this requirement may be considered “not fully compliant” and be rejected by the USPTO.

The DSMER program allows an applicant to delay responding to one or more Subject Eligibility Rejections (SMEs) under 35 USC § 101 until final disposition of the application, or withdrawal or cancellation of all other non-EMS releases. For example, to respond to a non-final action by the Office that raised a dismissal under 35 USC §101 (an SME dismissal) and a dismissal under 35 USC §102 (a non-SME dismissal) , the applicant can choose to process only the §102 rejection and postpone the processing of the §101 rejection.

Eligibility and participation

A patent application must meet the following criteria to be eligible for the DSMER program:

(a) the application is an original non-provisional utility application or the national step of an international application;

(b) the application does not claim the benefit of the earlier filing date of an earlier non-provisional application;

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

(d) the Office’s first substantive action includes both SME and non-SME rejections.

Under conditions (a) and (b), a continuation/divisional application will not be eligible for the DSMER Program since it claims priority over another non-provisional application (its parent application). On the other hand, an application at the national stage which claims the priority of an international application (i.e. a PCT application) or an application which claims the priority of a provisional application is eligible.

Under condition (c), an application that is granted special status for expedited processing, such as under Track One or Patent Prosecution Highway (PPH), is not eligible for the DSMER program.

Per condition (d), the DSMER program is only open to applications governed by the SME requirements (the requirements of 35 USC §101). Factory applications and design applications are excluded as they are not governed by SMB requirements.

At present, 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 Office’s first decision on the merits. A candidate who receives an invitation can choose to accept or decline the invitation. An applicant who accepts the invitation must file an application form PTO/SB/456 together with a prompt response to the Board’s first decision on the merits to indicate acceptance.

Duration of the DSMER program

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

Discussions

Under the DSMER programme, if a non-final Office action involves both SME and non-SME rejections, the applicant can only respond to non-SME rejections. Even if the SME questions are deferred, the examiner will still consider whether a candidate’s response to the non-SME rejections overcomes the SME rejections. The problems of SMEs can be solved while satisfying the requirements of non-SMEs (in fact this is often the case). This improves prosecution efficiency, helps plaintiffs save time and money, and also keeps case histories clean. However, if PME issues are not resolved after reviewing the applicant’s response, the reviewer may issue a Final Bureau Action whether or not a non-SME rejection remains. In this scenario, the applicant loses a chance to respond to the rejection of the EMS at the non-final stage of Office action and has to deal with it at the final stage of Office action. Additionally, since non-SME issues and SME issues are dealt with sequentially rather than concurrently, the total duration of prosecutions for these claims may be extended.

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

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