Applicants for a new United States (US) nonprovisional application or National Stage Entry application may see a new form paragraph in their first Office Action between now and the end of July. The United States Patent and Trademark Office (USPTO) has initiated a new invitation-only pilot program to address subject matter eligibility rejections under 35 USC 101. The Deferred Subject Matter Eligibility Response (DSMER) program allows the applicant to defer responding to the subject matter eligibility rejections until all remaining matters have been addressed or until a final disposition (i.e., a Final Action or Notice of Allowance) has been issued. Some types of applications are excluded from the pilot program, for example, continuing applications and applications that are receiving accelerated examination, e.g., due to age or health. To participate, the applicant must complete a request form available at here and submit it with a timely response to the Office Action.
The DSMER Pilot Program was established in response to a March 22, 2021 request by US Senators Thom Tillis and Tom Cotton. The program is intended to evaluate a theory that examination will be more efficient if eligibility of subject matter is delayed until after patentability has been evaluated for other factors. The Senators postulate that claim amendments to establish patentability with respect to written opinion, clarity, novelty, and nonobviousness will necessarily correct deficiencies in subject matter eligibility.
Subject matter eligibility refers to both statutory categories of inventions and to judicial exceptions to those categories. Statutory categories include a process, a machine, a manufacture (an article), and a composition. Judicial exceptions to these categories as a matter of statutory stare decisis include laws of nature, natural phenomena, and abstract ideas. Without “significantly more” than the patent ineligible concept, claims involving judicial exceptions are not patentable. Some examples of technology sectors that may involve judicial exceptions include software, business methods, life sciences, and even games. The Supreme Court addressed the source of these judicial exceptions in Flook, 437 US at 592.
Based on an April 2020 report by the USPTO, this program likely will only be relevant to about 10% of new applications. The report, entitled “Adjusting to Alice: USPTO patent examination outcomes after Alice Corp. v. CLS Bank International”, indicated that a mean 13.68% of applications received in the second half of 2014 and in 2015 were rejected under 35 USC 101. One-third of the applications in the dataset included claims to abstract ideas. The report also found that 25% fewer First Office Actions contained Section 101 rejections following USPTO’s January 2019 Revised Patent Subject Matter Eligibility Guidance (PEG).
It remains to be seen whether the DSMER Pilot Program will increase prosecution efficiency. Some rejections under 35 USC 101 are resolved by rephrasing a claim in a manner that will not have an impact on novelty, inventive step, clarity, adequate written description, or double patenting. Conversely, sometimes claims that have been determined to be novel and to have inventive step cannot be amended to overcome a rejection for subject matter eligibility. Subject matter eligibility should be considered when preparing an application to establish strategies should a Section 101 rejection be applied. Additional disclosure may be advisable to provide support for additional claim limitations.
The USPTO is inviting comment on the program by March 7, 2022, through the Federal eRulemaking Portal. The comments will be made publicly available. Therefore, the Office discourages including contact information or any other information the commenter does not wish to make public.
In conjunction with the DSMER Pilot Program, the applicant may take advantage of additional initiatives through the USPTO, including the COVID-19 Prioritized Examination Pilot Program (available through March 31, 2022) and the After Final Consideration Pilot 2.0 (available through September 30, 2022).
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