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January, 14th, 2022

The USPTO recently announced a pilot program to explore the effect of allowing applicants to defer responding to subject matter eligibility rejections. Federal Register :: Deferred Subject Matter Eligibility Response Pilot Program. The program is scheduled to run from February 1, 2022 to July 30, 2022, but may be extended.

Specifically, participating examiners may invite the applicant of an eligible application to participate in the pilot program, and the applicant may elect to accept or decline participation. To be eligible, the claims must raise both subject matter eligibility rejections and non-subject matter eligibility rejections, and the first Office Action on the merits must make both types of rejections.

For participating applications, the applicant must still file a reply to every Office Action, but the applicant has the choice to defer presenting arguments, evidence, or amendments in response to the subject matter eligibility rejection(s) until the earlier of final disposition of the application or the withdrawal or obviation of all other rejections. The applicant can no longer defer responding to any outstanding subject matter eligibility rejection(s) upon final disposition (e.g., after the mailing of a final Office action, filing of a notice of appeal, or filing of an RCE) or the withdrawal or obviation of all other outstanding rejections.

The idea behind this program is that many subject matter eligibility questions substantially overlap with patent doctrines such as obviousness, enablement, and indefiniteness, and delaying responding to subject matter eligibility questions may result in entirely avoiding eligibility decisions. Operating Efficiently Post-Bilski by Ordering Patent Doctrine Decision-Making by Dennis David Crouch, Robert P. Merges :: SSRN.

WHIPgroup attorneys are experts in patent prosecution and keep up to date on new USPTO procedures in order to assist clients in obtaining the best protection available.

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