AIPLA Submits Comments to the USPTO Notice of the Deferred Subject Matter Eligibility Response Pilot Program.

Written March 8, 2022

On March 7, AIPLA submitted comments on the recent USPTO Notice of the Deferred Subject Matter Eligibility Response Pilot Program. AIPLA noted that the Office’s current effort to develop a pilot program is intended to prioritize resolution of patentability issues under inter alia Sections 102, 103, and 112 of the Patent Act by permitting applicants to defer responding to a subject matter eligibility (SME) rejection until a later stage of prosecution.

AIPLA voiced support for the Office’s decision to identify all substantive issues with an application in the first office action (FAOM). Thus, as proposed by the Office, a rejection for subject matter ineligibility would initially be issued with all other rejections, and only the applicant’s response to the eligibility rejection is deferred.

We did note, however that the notice does not clearly state that the next office action on any remaining SME rejection will not be made final under 37 CFR 1.113. AIPLA believes that an applicant, not having responded to the deferred SME rejection, should not receive a final rejection if and when the deferred SME rejection is reasserted. The notice is also not clear that applicant would not be subject to the strict standards of 37 CFR 1.116 with respect to their first and only SME response after a final office action. AIPLA believes this may reduce the number of applicants choosing to participate in the program.

AIPLA provided a number of suggestions for the Office's consideration on improvements or clarifications to the pilot program.

Click the downloadable PDF to the right to view the full set of comments.