New USPTO Pilot Program Takes Aim at Endless Section 101 Rejections

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  • January 06, 2022

Last year, U.S. Senators Thom Tillis and Tom Cotton wrote to Commissioner for Patents Drew Hirshfeld at the United States Patent and Trademark Office (USPTO) to express concern about an issue that has frustrated patent applicants for many years:  the tendency of some patent examiners to focus on subject matter eligibility (SME) rejections under Section 101, to the detriment of the overall examination process. These rejections include "abstract idea" rejections that have become common in the software space and, increasingly, other technology areas as well.

On January 6, 2022, the USPTO announced a new Deferred Subject Matter Eligibility Response (DSMER) Pilot Program for nonprovisional patent applications that will launch on February 1, 2022. According to the USPTO, this pilot program is designed to evaluate how deferring applicant responses to SME rejections could affect examination efficiency and patent quality as compared to the traditional policy of "compact prosecution," in which examiners are expected to raise (and applicants are expected to respond to) every relevant rejection in every office action.

Under this program, which is by invitation only, the usual requirement that applicants must fully respond to every rejection will be deferred for SME rejections until "final disposition" (such as a notice of allowance or final office action) or all prior art, clarity, and other rejections have been resolved. According to the USPTO, "Applicants may receive invitations to participate if their applications meet certain criteria, including a requirement that the first Office action on the merits makes both SME and non-SME rejections."

Senators Tillis and Cotton expressed hope in their letter that such a program "focuses initial examination on the objective areas of patentability as opposed to the abstract, vague, and subjective questions of eligibility," "improves efficiency by avoiding the waste of valuable examination and applicant time on vague questions of patent eligibility as a threshold matter," and "leads to stronger, more reliable, and higher quality patents by focusing first on the more rigorous and easy to identify standards of patentability."

While the practical effect of this program will not be known for some time, any initiative that aims to reduce examination time and save applicants from responding to unnecessary or premature rejections is a welcome step in the right direction.

For more information, see the Federal Register Notice announcing the program and the DSMER Pilot Program page of the USPTO website.

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