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New pilot provides opportunity to defer subject matter eligibility rejections...

The United States Patent and Trademark Office (USPTO or Office) is implementing a pilot program to evaluate the effects of permitting applicants to defer responding to subject matter eligibility (SME) rejections in certain patent applications. Under this pilot program, applicants may receive invitations to participate if their applications meet the criteria for the program as specified in this notice, including a criterion that the claims in the application necessitate rejections on SME and other patentability-related grounds. An applicant who accepts the invitation to participate in this pilot program must still file a reply to every Office action mailed in the application, but is permitted to defer responding to SME rejections until the earlier of final disposition of the application, or the withdrawal or obviation of all other outstanding rejections.

Invitations to participate in the Deferred Subject Matter Eligibility Response (DSMER) Pilot Program will be mailed during theStart Printed Page 777period beginning on February 1, 2022, and ending on July 30, 2022. The USPTO may extend the pilot program (with or without modifications) or terminate it depending on the workload and resources needed to administer the program, feedback from the public, and the effectiveness of the program. 

Participating applicants may defer engaging with examiners on SME issues until after non-SME issues have been addressed. The USPTO will identify any application as a prospective pilot application if it satisfies the following conditions during the invitation phase:

(1) The application is assigned to a participating examiner. Primary examiner's have the discretion to participate or not. 

(2) The application must be an original nonprovisional utility application, and must not be a continuation or application requesting continued examination.  Some accelerated examination applications are not eligible.

(3) The prospective pilot application must raise both SME issues and non-SME issues that necessitate rejections, and the first Office action on the merits must make both SME and non-SME rejections. 

An applicant receiving an invitation to participate in the DSMER Pilot Program may elect to accept the invitation and participate in the program or to decline participation. If you use Paradies law, we will help you make this decision. 

Have an idea for a new invention? Contact Paradies Law P.A. to speak with Chris Paradies for an evaluation of your invention's patentability:


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