USPTO Announces Deferred Subject Matter Eligibility Response (DSMER) pilot program

The United States Patent and Trademark office announced the Deferred Subject Matter Eligibility Response (DSMER) pilot program is designed to evaluate how deferred applicant responses to subject matter eligibility (SME) rejections affect examination efficiency and patent quality as compared to traditional compact prosecution practice. The program was initiated in response to a letter from Senators Thom Tillis and Tom Cotton.

Participation

Participation in this program is by invitation only. You may receive an invitation to participate if your application meets the criteria specified in the Federal Register notice announcing the program. These criteria include requirements that:

• the application is an original nonprovisional utility application or national stage of an international application;
• the application does not claim the benefit of the earlier filing date of any prior nonprovisional application;
• the application has not been advanced out of turn (accorded special status); and
• the first office action on the merits makes both SME and non-SME rejections.

Invitations will be mailed during the period beginning on February 1, 2022, and ending on July 30, 2022. The invitation will be included as a form paragraph in the first office action on the merits, and will inform you how to accept or decline the invitation.

To accept the invitation and participate in the program, applicants must electronically file a completed request form PTO/SB/456 concurrently with a timely response to the first office action on the merits. If the applicant does not timely file a properly completed PTO/SB/456 the application will not be entered into the program. When uploading the PTO/SB/456 form, applicant should select document description “Deferred Subject Matter Eligibility Response Pilot Request” (found under the “Pilot Programs” category) to ensure appropriate processing.

How this program works

Participation in this pilot program provides the applicant with a limited waiver of 37 CFR 1.111(b)^{(page R-131)} with respect to SME rejections in the participating application. In brief, although the applicant must still file a reply to every office action, the limited waiver permits the applicant to defer presenting arguments or amendments in response to the SME rejection(s) until the earlier of final disposition of the participating application, or the withdrawal or obviation of all other outstanding rejections. Other than this permitted deferral of responding to SME rejection(s), the applicant’s replies must be fully responsive to office actions, and the application will undergo the normal prosecution process as described in MPEP chapter 700.

More information about the limited waiver and other aspects of program procedure is provided in the Federal Register notice announcing the program.

Resources

Guidance, examples, and other information about how office personnel including patent examiners evaluate claims for patent subject matter eligibility under 35 U.S.C. 101 are available on the subject matter eligibility webpage.

The following resources provide additional information about the DSMER pilot program:

• Federal Register notice announcing the program
• Form PTO/SB/456
• Pilot Invitation Form Paragraph