The Patent Office recently introduced a new pilot program called the Deferred Subject Matter Eligibility Response pilot program going into effect on February 1. As detailed in a Federal Register notice, the program permits applicants to delay responding to rejections for ineligible subject matter—e.g., that the claims are directed to an abstract idea or law of nature—until later in prosecution.
An applicant will have the opportunity to participate in the pilot program if the first office action on the merits in a case includes a form paragraph inviting them to participate. If the applicant chooses to participate, then the applicant can choose not to respond to a rejection for ineligible subject matter “until the earlier of final disposition of the participating application or the withdrawal or obviation of all other outstanding rejections.” A final disposition includes a final office action, as well as a notice of allowance, notice of appeal, request for continued examination, and abandonment. The “withdrawal or obviation of all other outstanding rejections” refers to an additional nonfinal office action maintaining the ineligible-subject-matter rejection but withdrawing all other rejections. Generally, applicants will be able to avoid responding to the § 101 rejection in a response to the first nonfinal office action but will have to respond thereafter.
Not all applicants will be able to participate. The pilot program is limited to office actions sent between February 1 and July 30, though the program may be renewed. Participation by examiners is voluntary, so the application must have been assigned to a participating examiner. The application must be an original nonprovisional utility application or the national stage of a PCT application designating the United States; continuations and divisionals are not eligible. The application cannot be expedited. Finally, the office action must have a rejection for ineligible subject matter and a rejection with some other basis such as anticipation, obviousness, indefiniteness, or enablement. The ineligible-subject-matter rejection can be a statutory rejection, meaning that the claims are not directed to one of the four categories listed in 35 U.S.C. § 101, or the ineligible-subject-matter rejection can be that the claim is directed to a judicial exception such as in the Supreme Court cases Alice and Mayo. The rejections do not necessarily have to be applied to the same claims, just appear in the same office action.
The limited timeframe affords the Patent Office the opportunity to study the effects of the program. The Patent Office will evaluate “examination efficiency and patent quality.” Comments can be submitted to the Patent Office through March 7. The comments and study may result in the Patent Office renewing the program.
The program was originally prompted by a letter to the Patent Office from Senators Thom Tillis and Tom Cotton. These Republican senators serve on the Subcommittee on Intellectual Property in the Judiciary Committee, which has jurisdiction over the Patent Office. In the Senators’ view, rejections for ineligible subject matter “lack the clarity, consistency, and objectiveness the other grounds of patentability possess.” Moreover, amendments to address other types of rejections often end up resolving the ineligible-subject-matter rejection. Ineligible-subject-matter rejections are thus difficult for examiners and a waste of time.
Lessons for Practice
So if an applicant receives an invitation in an office action, what should they do? First, the applicant should interview the examiner. Because the form for participating in the program is not due until the response to the office action, the applicant can conduct the interview before deciding whether to participate. The main benefit of participating is a reduced prosecution history, meaning less chance of estoppel applying, less chance of a statement being used to narrow claim construction in litigation, and so on. Cons include fewer opportunities to argue the ineligible-subject-matter rejection to the examiner and less information about the examiner’s position, which may be helpful to know in case of appeal. If the examiner agrees in the interview that an amendment overcomes the ineligible-subject-matter rejection, then the pros will outweigh the cons. If disagreement remains, then sussing out the examiner’s position may be more beneficial than participating in the program.