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 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.
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 Flowchart
- Pilot Invitation Form Paragraph
How to comment
- We are interested in receiving public feedback on this program. To ensure consideration, written comments must be received on or before March 7, 2022.
- Comments must be submitted through the Federal eRulemaking Portal.
- To submit comments, navigate to the DSMER pilot program docket page by selecting the provided link, or by visiting www.regulations.gov, entering docket number PTO-P-2021-0033 on the homepage, and clicking “search.” The site will provide a search results page listing all documents associated with this docket.
- Once on the docket page, find a reference to this notice and click on the “Comment Now!” icon, complete the required fields, and enter or attach your comments.
- Attachments to electronic comments will be accepted in ADOBE® portable document format or MICROSOFT WORD® format. Because comments will be made available for public inspection, information that the submitter does not desire to make public, such as an address or phone number, should not be included in the comments.
- For an EFS-Web, Patent Center, or PAIR system question, contact the Electronic Business Center at 866-217-9197.
- For questions regarding the Deferred Subject Matter Eligibility Response (DSMER) pilot program Federal Register notice, please contact Nalini Mummalaneni, Legal Advisor, Office of Patent Legal Administration, at 571-270-1647.
- For general questions regarding program implementation, contact Dan Sullivan, Director, Technology Center 1600, at 571-272-0900.
- Questions regarding a specific application should be directed to the Technology Center examining the application.