The United States Patent and Trademark Office (“USPTO”) has announced a new pilot program, called the Deferred Subject Matter Eligibility Response Pilot Program (“Pilot Program”), which will allow some patent applicants to defer responding. to the refusal of eligibility of a subject. From February 2022, Office actions for eligible patent applications may include an invitation to participate in the pilot program. As part of the pilot program, applicants can delay responding to a subject’s eligibility rejection until final office action or the withdrawal of all other rejection. The pilot program will examine whether the subject’s eligibility rejections can be overcome in response to other rejections (for example, indeterminacy, novelty / obviousness, etc.). From the plaintiff’s perspective, the pilot program has the advantages of a reduced prosecution history and more time to consider arguments, among other things.

The recent tumultuous history of 35 USC § 101 (the law governing what is patentable subject matter) in court has resulted in a lack of clarity as to what subject matter is actually patentable in the USPTO. Senators Thom Tillis of North Carolina and Tom Cotton of Arkansas have called on the USPTO to adopt a pilot program that allows applicants to defer responding to any eligibility rejection of a subject to determine whether such program would result in “more efficient” patent prosecution and produce “quality patents.” In light of the senators’ requests, the USPTO is implementing the pilot program.

As part of the pilot program, office actions issued on or after February 2, 2022 may include an invitation for an applicant to defer responding to any eligibility rejection of a subject until the final decision on the application. or the withdrawal or elimination of any outstanding releases. In order to be invited to participate in the pilot program, the patent application will have to meet three requirements. First, the examiner of the patent application must be a primary examiner who has chosen to participate in the voluntary pilot program. Second, the patent application cannot be a continuation or divisional application of a United States patent application, and neither can the patent application be advanced in turn. Third, the office’s action must include a rejection of object eligibility and at least a rejection of non-object eligibility, such as a rejection of finality, novelty, or obviousness. Applicants cannot apply to be in the pilot program, the invitation must be extended by the examiner. To accept the invitation, applicants will need to complete an application form (PTO / SB / 456) along with the response to the office action.

The pilot program allows applicants to defer responding to any rejection of a subject’s eligibility until the first date of a final decision on the application or the withdrawal or elimination of all outstanding rejections. In effect, this allows applicants to defer responding to the subject’s eligibility rejections until a final office action is posted, which is usually the second office action. In most cases, applicants will be able to defer the response to subject eligibility rejections for a single response. As part of the pilot, at least in the first office action response, an applicant can ignore the subject’s eligibility rejection entirely, respond to only part of the subject eligibility rejection, or respond to all of the subject’s eligibility rejection. rejection of subject eligibility.

For patent applicants, the pilot program may reduce, if not eliminate, the need to present arguments on file to overcome object eligibility rejections. For example, applicants may be able to reduce or eliminate characterizations of limitations of claims that are not yet in their final amended form by amending the claims and awaiting disposition of the claims as amended, without commenting on the rejection. the admissibility of the subject matter of the previous version of the claims. Additionally, applicants will have more time to review the initial rejection of subject eligibility arguments when responding to an initial rejection of subject eligibility.

By participating in the pilot program, applicants must accept certain limitations, such as agreeing to refrain from requesting expedited processing of the patent application.


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