New Program May Provide Patent Relief for Software

Miller Nash LLP
Contact

Miller Nash LLP

In 2014, the US Supreme Court announced its decision in Alice Corp. v. CLS Bank International. The decision ruled that patent claims for computer-implemented inventions may be abstract ideas, making it questionable if they are “patent eligible subject matter.” This has nothing to do with someone else having patented it first (prior art); it is only about whether one can even get a patent on these inventions. This has resulted in seven years of confusion and upheaval as software companies try to find ways around Alice to patent their software. However, the USPTO has a new program, the Deferred Subject Matter Eligibility Response (DSMER) pilot program. Starting February 1, 2022, certain patent applications will receive an invitation to join this program. The program allows the applicant to set aside arguments about the patent eligibility and only address the prior art rejections. Then, once the prior art rejections are overcome, the applicant addresses the eligibility issue. Instead of addressing both prior art and eligibility rejections at the same time, they will be addressed one at a time, prior art and then eligibility. The idea is that this will improve efficiency of the process and improve patent quality. Since this program has not even started, it is hard to know whether the amount of time to get through the process will decrease. One could see where it may even take longer.

Details on the program can be found here.

[View source.]

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Miller Nash LLP | Attorney Advertising

Written by:

Miller Nash LLP
Contact
more
less

Miller Nash LLP on:

Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Custom Email Digest
- hide
- hide

This website uses cookies to improve user experience, track anonymous site usage, store authorization tokens and permit sharing on social media networks. By continuing to browse this website you accept the use of cookies. Click here to read more about how we use cookies.