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ARTICLE · 10 JANUARY 2022

USPTO's Pilot Program For Deferring Subject Matter Eligibility (SME) Responses

On January 6, 2022 the U.S. Patent Office (USPTO) announced a new pilot program that will allow patent applicants to delay responding to Office Actions that include issues of subject matter eligibility (SME) under 35 USC § 101/Alice.

United StatesIntellectual Property

On January 6, 2022 the U.S. Patent Office (USPTO) announced a new pilot program that will allow patent applicants to delay responding to Office Actions that include issues of subject matter eligibility (SME) under 35 USC § 101/Alice. The pilot program is named the "Deferred Subject Matter Eligibility Response Pilot Program."

Under the pilot program, an applicant will receive an invitation to participate if the pending patent application meets specific criteria (e.g., the application must be an original application – not a continuing application, and there must be both SME issues and non-SME issues as identified by the examiner).

My thinking is that the pilot program will be well received as it will reduce prosecution costs, for example, where an applicant can attempt to overcome 35 USC § 101 issues when responding or amending on other grounds (e.g., 35 USC § 103).

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