United States: 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. 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).

For example, in my experience, there is often an opportunity to respond to an office action in a way that deals with both 35 USC § 101 as well as 35 USC §§ 102 and/or 103 issues. The thinking is that by deferring your response for Section 101 issues, you can save time (e.g., attorney fees) by preparing a more limited response, without detailed arguments as to Section 101, Alice, etc. In this way, costs can be saved. As the USPTO puts it in its notice: "Because satisfaction of non-SME conditions for patentability e.g., novelty, non-obviousness, adequacy of disclosure, and definiteness) may resolve SME issues as well, the pilot program may result in improved examination efficiency and increased patent quality as compared to compact prosecution practice, particularly in certain technology areas."

The "certain technology areas" mentioned by the USPTO are no doubt those in the computer-implemented invention (CII) or otherwise software-implemented invention areas. This may also benefit biotech based inventions, which can receive "natural phenomena" based 35 USC § 101 rejections. So the new pilot program can be expected to be especially beneficial to these types of inventions.

Details may be found in the notice at the following link for the Federal Register: Deferred Subject Matter Eligibility Response Pilot Program, 87 Fed. Reg. 776 (Jan. 6, 2022).

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