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ARTICLE · 15 MARCH 2022

USPTO Offers Deferred Subject Matter Eligibility Response (DSMER) Pilot Program

Armstrong Teasdale LLP
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The current framework for determining patent subject matter eligibility flows from U.S. Supreme Court decisions in Mayo Collaborative Services v Prometheus Laboratories (Mayo) and Alice Corp. v CLS Bank International (Alice).

United StatesIntellectual Property
Zachary J. Block
Zachary J. Block
Lucas Amodio
Lucas Amodio
MichaelH. Longmeyer
MichaelH. Longmeyer

The current framework for determining patent subject matter eligibility flows from U.S. Supreme Court decisions in Mayo Collaborative Services v Prometheus Laboratories (Mayo) and Alice Corp. v CLS Bank International (Alice). The analysis under Mayo and Alice is often difficult to apply and can yield unpredictable results from application to application, and from forum to forum. The Deferred Subject Matter Eligibility Response (DSMER) Pilot Program is an effort by the U.S. Patent and Trademark Office (USPTO) to discover potential improvements in efficiency and quality of examination.

Upon selection, the DSMER Pilot Program allows applicants to wait until novelty, obviousness and other issues are resolved before substantively addressing subject matter eligibility. Recognizing the inherent factual inquiries bound up in current patent subject matter eligibility jurisprudence, the DSMER Pilot Program gives applicants and examiners the benefit of a developed record on

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