USPTO’s Deferred Subject Matter Eligibility Response Pilot Program
The U.S. Patent and Trademark Office (“USPTO”) recently implemented a pilot program that is “designed to evaluate how deferred applicant responses to subject matter eligibility rejections affect examination efficiency and patent quality as compared to traditional compact prosecution practice.”[1] Subject matter eligibility rejections occur when “the examiner believes that [the] claims relate to a type of invention that is ineligible for patent protection.”[2] Generally, this means that the invention does not fall into a category of process, machine, manufacture, or composition of matter, or that they fall into patent ineligible concepts.[3] Patent ineligible concepts include laws of nature, natural phenomenon, abstract ideas, abstract intellectual concepts, mental processes, and mathematical algorithms.[4] These “patent ineligible” concepts can be difficult to apply to particular inventions, which contributes to imprecise subject matter eligibility rejections.[5] Along with subject matter eligibility rejections, other bases for rejection include novelty, non-obviousness, and specification.[6]
The Deferred Subject Matter Eligibility Response Pilot Program was implemented in response to a letter from Senators Tillis and Cotton, which suggested modifying the compact patent examination process.[7] The Senators think that the current procedures are flawed in that examiners may reject the patent application without addressing all of the necessary elements.[8] The Senators believe that assessing prior art, clarity, and enablement issues first may prove subject matter eligibility.[9] As the patent examination now stands, applicants must respond to all rejections promptly.[10] However, it is common for amendments in response to one rejection to resolve other rejections, which is due in part to the well-developed criteria in place for non-subject matter eligibility review as opposed to the vague analysis for subject matter eligibility.[11] Because of this, it can be burdensome and unnecessary for applicants to respond to every rejection.[12]
This pilot program will benefit applicants because it will reduce costs and will leave a smaller history of prosecution under the patent.[13] Under this program, a waiver will permit applicants “to defer presenting arguments or amendments in response to the [subject matter eligibility] rejections until the earlier of final disposition of the participating application, or the withdrawal or obviation of all other outstanding rejections.”[14] Responding to subject matter eligibility rejections is time intensive and expensive, so deferring the need to amend and argue makes the patent process easier for applicants.[15] The program is invitation only and, among other criteria, will be extended to applicants whose patents have both a subject matter eligibility rejection and a non-subject matter eligibility requirement.[16] This will allow applicants to address only non-subject matter eligibility rejections at first and may “cause an increase in the number of early [subject matter eligibility] rejections that are later withdrawn.”[17] It is important to note that the pilot program does not truncate subject matter eligibility examination, it simply delays the need for arguments and amendments in response to a subject matter eligibility rejection.[18]
Overall, the Deferred Subject Matter Eligibility Response Pilot Program is a positive step in making the patent examination process faster and more efficient for applicants. If the results show greater efficiency and patent quality, implementation on a larger scale could benefit even more applicants.
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