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Subject Matter Eligibility Responses May be Deferred in USPTO Pilot Program

January 31, 2022

By: Christine M. Wise

On February 1, 2022, the USPTO will launch a Deferred Subject Matter Eligibility Response Pilot Program for qualifying non-provisional patent applications in which the first Office action contains subject matter eligibility (SME) and non-SME rejections.  This program is by invitation only, and once the invitation is accepted, participation in the program allows an applicant to defer responding to the SME rejection under 35 U.S.C. §101 until final disposition (final Office action, notice of allowance, request for continued examination, abandonment of the application) or withdrawal of all other outstanding rejections.  

If the non-SME rejections are overcome, a second non-final Office action will be issued for the applicant to respond to the SME rejection.  However, if the non-SME rejections are not overcome, a final Office action will be issued.  The applicant will be required to respond to the SME rejection.  Applicant-initiated interviews are permitted under this program to discuss SME and non-SME rejections.

This program will allow the USPTO to evaluate how deferring responses to SME rejections affect examination efficiency and patent quality, compared to traditional prosecution practice.

If you have any questions, or would like further information about the Deferred Subject Matter Eligibility Response Pilot Program, please contact us.