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NEWSLETTER ARCHIVE

Volume 53, Issue 1

Deferred Subject Matter Eligibility Response (DSMER) Pilot Program Is Now Open

By Yale N. Robinson

The USPTO is now sending invitations for a new pilot program, which is called Deferred Subject Matter Eligibility Response (DSMER). It covers utility patent applications that an examiner has rejected for reasons of both subject matter eligibility (SME) under section 101, and non-SME patentability issues under sections 101, 102, 103, or 112. Participation is by invitation only. The USPTO plans to mail invitations between February 1 and July 30, 2022.

If an examiner includes this invitation within the first office action on the merits, the applicant may choose to respond first to non-SME patentability issues, and defer addressing SME until later. This deferral constitutes a partial waiver of the general rule in 37 CFR 1.111(b) that an applicant “must reply to every ground of objection and rejection in the prior Office action” (emphasis added). The deferral period lasts “until the earlier of final disposition of the application, or the withdrawal or obviation of all other outstanding rejections,” according to a Federal Register notice announcing the pilot program on January 6, 2022. Practitioners may refer (in the Federal Register notice) to section III, titled “Pilot Procedure,” for details.

Accepting an Invitation

Applicants may accept an invitation by submitting Form PTO/SB/456 concurrently with a timely response to the office action. Participants in DSMER must file Form PTO/SB/456 electronically, using EFS-Web or the Patent Center. In addition, they must not seek special status or expedited processing of the application until final disposition is reached.

Declining an Invitation

Applicants who do not wish to participate in DSMER must present arguments or amendments for both SME and non-SME issues in their response to the first office action on the merits. An applicant does not need to decline the invitation explicitly.

Origin and Purpose of DSMER

DSMER was created in response to a letter that Senators Thom Tillis and Tom Cotton sent to Drew Hirshfeld, Commissioner of Patents, on March 22, 2021. The senators suggested that the USPTO modify “the traditional compact examination approach” to a new “sequenced approach.” They noted that examiners who previously used a sequenced approach often induced applicants to amend their claims to be allowable, without arguing about SME. “This is because by bringing claims into compliance with Sections 102, 103, and 112, examiners inevitably brought the claims into compliance with Section 101 as well,” the senators wrote.

Similarly, Commissioner Hirshfeld explained, in the above-cited Federal Register notice, that the purpose of DSMER is “to evaluate how deferred applicant responses to SME rejections affect examination efficiency and patent quality as compared to traditional compact prosecution practice. Because satisfaction of non-SME conditions for patentability (e.g., novelty, non-obviousness, adequacy of disclosure, and definiteness) may resolve SME issues as well, the pilot program may result in improved examination efficiency and increased patent quality as compared to compact prosecution practice, particularly in certain technology areas.”

The Federal Register notice seeks public comments to be received by March 7, 2022.

Yale Robinson is a patent attorney living in Malden, MA.  He holds a B.A. in chemistry from Yeshiva University, a J.D. from Cardozo School of Law, and an LL.M. in Taxation from Boston University.  Yale currently works as an attorney with the Low Income Taxpayer Clinic at Northeast Legal Aid in Lynn, MA.

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