USPTO's Pilot Program For Deferring Subject Matter Eligibility Response

1. Introduction

On January 6, 2022, the U.S. Patent and Trademark Office (USPTO) announced a Deferred Subject Matter Eligibility Response Pilot Program (the "DSMER Program"). We provide a brief overview of this program.

Currently, the USPTO applies a "compact prosecution approach" in examining patent applications. Under this approach, an examiner will identify all applicable grounds for objections and rejections in each Office Action. An applicant is required to address all these objections and rejections in one response. A response that fails to meet this requirement may be considered "not fully responsive" and be rejected by the USPTO.

The DSMER Program allows an applicant to delay responding to one or more Subject Matter Eligibility (SME) rejections under 35 U.S.C. § 101 until the earlier of the final disposition of the application, or the withdrawal or obviation of all other non-SME rejections. For example, for responding to a non-final Office Action