On January 6, 2022, the U.S. Patent and Trademark Office announced a new program with the goal of increasing examiner efficiency.  The Deferred Subject Matter Eligibility Response (DSMER) Pilot Program will launch on February 1, 2022 and end on July 30, 2022, unless extended.[1]  The Program allows applicants to, in certain circumstances, not include a substantive reply to a 35 U.S.C. § 101 rejection in an Office action response.  The USPTO initiated the Program at the suggestion of Senators Thom Tillis and Tom Cotton (see "Senators Tillis and Cotton Propose Sequenced Examination Approach").

In order for an application to quality for the Program, it must meet the following requirements:

• Assignment to a participating examiner.  All primary examiners can participate in the Program, but participation is not mandatory.

• Be of the proper application type and status.  All original non-provisional utility applications (including those in national stage) that do not claim priority to an earlier non-provisional application are candidates.  These applications may claim priority to an earlier effective priority date than their own, such as to a U.S. provisional or a PCT application.  Further, candidate applications cannot also participate in expedited prosecution programs (e.g., Track 1), though expedited after-final program (e.g., AFCP2.0 and QPIDS) participation is allowed.

• The claims are subject to rejection on the basis of both subject matter eligibility (35 U.S.C § 101) and one or more additional conditions for patentability (e.g., 35 U.S.C. §§ 102, 103, and/or 112, utility, inventorship, or double patenting).  No one claim needs to be rejected under both § 101 and any of these other grounds.  Further, both types of § 101 rejections qualify -- claims that fail to be of one of the four statutory categories as well as those that are directed to a judicial exception without reciting significantly more than that exception.

A qualifying application will be identified in the first Office action on the merits (restriction or election requirements are not considered first actions on the merits), thus limiting the program to otherwise unexamined applications.  In this Office action, the examiner will invite the applicant to participate in the Program.  If the applicant agrees to participate, it must electronically file a form PTO/SB/456 concurrently with a timely response to the Office action.[2]  If the applicant does not file the form, the application will not be in the Program and normal prosecution will continue.  While participation in the Program cannot be withdrawn, the applicant may at any time choose not to avail itself of the Program's provisions (i.e., the applicant can file a substantive reply to a § 101 rejection if desired).

For a participating application, the applicant may file a response that defers "presenting arguments, evidence, 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."  But, the applicant must respond to all other objections and rejections in the Office action.  In other words, if the claims are rejected on the grounds of subject matter eligibility and obviousness, the applicant must respond to the obviousness rejections and can choose whether to respond to the eligibility rejections.

The "final disposition" above is when the earliest of any of the following events occurs: (i) mailing of a notice of allowance, (ii) mailing of a final Office action, (iii) filing of a notice of appeal, (iv) filing of an RCE, or (v) abandonment of the application.[3]  In the case that the applicant receives a subsequent non-final Office action in which only the § 101 rejection remains, the applicant must respond to this rejection even though the application has not reached a final disposition.

Further, the applicant's deferral of § 101 responses can be on a rejection-by-rejection basis.[4]  For instance, if an Office action contains two different § 101 rejections, the applicant may defer one, the other, or both.  The USPTO also contemplates removing an application from the Program in certain rare situations, such as when a participating examiner resigns or retires and the application is not reassigned to another participating examiner.

Even when § 101 issues are deferred by the applicant, the examiner must consider whether the applicant's responses made to address other rejections (e.g., claim amendments in response to obviousness rejections) overcome the § 101 rejections.  Additionally, § 101 issues can be made of record in interview summaries, should these issues be discussed by the examiner and the applicant's representative, as well as in an examiner's reasons for allowance.

On paper, the Program appears to be a positive step forward, albeit a small one.  With very few exceptions, the Program only applies when an application qualifies and the applicant is responding to a first action on the merits.[5]  Nonetheless, it does simplify the response process for the applicant (in some cases, responding to a § 101 rejection atop responding to a prior art rejection can double the amount of time and cost of preparing the response).

Moreover, many attorneys and agents have already adopted the practice of focusing on prior art rejections over § 101 rejections until the former are overcome.  This is because for §§ 102 and 103 rejections, whether the applicant should make claim amendments is usually more cut and dry than for § 101 rejections.  And, if amendments are made to overcome prior art, then this narrowing may also place the claims in a more favorable light with respect to § 101.

The USPTO is inviting comments on the Program until March 7, 2022.

[1] The USPTO really needs to work on its acronyms.  DSMER?  It had the opportunity to go with the "Subject Matter Eligibility Laying Low (SMELL) Pilot Program" . . . but no.

[2] The announcement states that the "form must be signed, in accordance with 37 CFR 1.33(b), by a person having the authority to prosecute the application."  This implies that a power of attorney from the applicant to the attorney or agent should not be required for this form to be effective. 

[3] In the case of revival of an abandoned application with pending § 101 rejections, the applicant must include a response to these rejections even if the application was in the Program.

[4] It is not clear whether the applicant can choose to defer § 101 rejections on a claim-by-claim basis.

[5] It would be interesting to know whether the USPTO considered opening the program to post-RCE non-final Office actions, and if so, why applications with such a status do not qualify.