Osha Attorneys
Osha Attorneys
Osha Attorneys
Osha Attorneys
Attorney search
Search by

The collective expertise of our global team distinguishes OBWB in the field of Intellectual Property Law. We align our best resources to meet each client's specific needs and we treat each matter with the highest degree of attention and care.

The USPTO Ushers in the Deferred Subject Matter Eligibility Response (DSMER) pilot program

日本語    简体中文    繁體中文


In an effort to provide flexibility with respect to the timing of addressing subject matter eligibility (SME) rejections, and in response to congressional pressure, the USPTO has launched a new pilot program known as the Deferred Subject Matter Eligibility Response (DSMER) pilot program.  The new pilot program allows an applicant to defer responding to SME rejections for a limited period of time, in the hope that first addressing other patentability rejections will obviate the SME rejections. 

Under current procedures, USPTO examiners review the subject matter eligibility (SME) of a patent application under 35 U.S.C. Section 101 in conjunction with assessing the patentability of the claim under Sections 102 (novelty), 103 (obviousness), and 112 (enablement, definiteness).  Although there is much debate about whether SME is intertwined with any or all of these additional patentability requirements, patent examiners are currently issuing Section 101 rejections without the benefit of addressing prior art, clarity and enablement issues that may well inform the examiner that the claim is eligible under Section 101.  For example, one method for overcoming a Section 101 rejection is to integrate claimed elements into a practical application.  Such an amendment may be made during the course of examination to overcome an anticipation or obviousness rejection as well.  Thus, if an applicant is permitted to defer responding to SME rejections, it may be the case that a Section 101 rejection that existed initially during examination is obviated through the course of responding to other patentability rejections. 

In a letter to the USPTO Commissioner in March 2021, two senators urged the Commissioner to direct examiners to apply a sequenced approach to patent examination, where SME issues are considered only after a full examination based on all other grounds of patentability is complete.  Under the DSMER program, such a sequenced approach will not be fully implemented, although the concept will be at least partially applied.  Instead, the examiner will still consider the SME question in the initial office action.  However, applicants who successfully enter into the DSMER program are permitted to defer responding to the SME rejections made by the examiner in the initial office action and in any subsequent non-final office action.  If not previously withdrawn by the examiner, the SME rejections will be responded to at the time of final disposition of the application, according to the following procedures.      

First, to be admitted into the DSMER pilot program, an eligible application must be an original nonprovisional utility application or a national stage of an international application.  Second, the application cannot claim the benefit of an earlier filing date of any prior nonprovisional application and cannot be afforded any special status for purposes of expediting prosecution (e.g., Track One, First Action Interview Pilot Program, Patent Prosecution Highway, etc.).  Third, the first office action on the merits must make both SME and non-SME rejections.  If a particular application qualifies under the above three criteria, an invitation is made in the first office action, which the applicant may accept or decline.  Invitations will be mailed during the period beginning on February 1, 2022, and ending on July 30, 2022.  

Acceptance of the invitation provides the applicant with a limited waiver with respect to SME rejections in the first office action.  The limited waiver permits the applicant to defer presenting arguments or amendments in response to the SME rejections until the earlier of final disposition of the participating application, or the withdrawal or successful argument against all other outstanding rejections.  During examination, if the SME rejections are overcome by way of addressing other patentability issues, examiners are directed to withdraw the SME rejections.  If, however, at the time of final disposition, the SME rejections still remain, the applicant must specifically address the SME rejections.  Practically, this means that once a final office action is issued, the limited waiver ends, and any after-final response or appeal must address the SME rejection(s) on the existing record. 

In theory, this new ‘by invitation only’ program allows for the applicant and the examiner to conduct the SME analysis at a more suitable point in the examination process, where such an analysis can be conducted effectively (i.e., after rejections based on enablement and prior art are overcome).  In an ideal scenario, the first two office actions are non-final, and amendments made to overcome other patentability rejections are sufficient to overcome the SME rejection made in the initial office action.  Unfortunately, examination practices are rarely ideal.  When a second action on the merits is a final action constituting a final disposition in the case, the limited waiver ends, thereby limiting the time frame in which to overcome both prior art and SME issues. 

We will report again on the conduct and success (or failure, as the case may be) of the DSMER pilot program.