USPTO Pilot Aims to Increase Efficiency

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In March of 2021, Senators Thom Tillis (R-NC) and Tom Cotton (R-AR) asked the interim director of the US Patent and Trademark Office (USPTO) to “initiate a pilot program directing examiners to apply a sequenced approach to patent examination,” rather than the traditional “compact approach.”

Their letter stated:

Our understanding is that under current procedures, examiners review the eligibility of a patent application under 35 U.S.C. Section 101 in conjunction with assessing the patentability of the claim under Sections 102, 103, and 112. Our concern is that by conducting an eligibility analysis as per current practice, patent examiners may be issuing Section 101 rejections without the benefit of addressing prior art, clarity and enablement issues that may well inform the examiner that the claim is eligible under Section 101.

As you know, examination under Sections 102, 103, and 112 is based on well-developed and objective criteria under the law. Unfortunately, current patent eligibility jurisprudence lacks the clarity, consistency, and objectiveness the other grounds of patentability possess. Our concern is that by conducting an inherently vague and subjective analysis of eligibility early in the examination process, examiners may be spending inordinate time on Section 101 at a time when it is difficult or impossible to conduct a meaningful examination under Section 101, at the expense of the more rigorous analysis and precise and thoughtful work that can be conducted at the outset of examination under Sections 102, 103, and 112.

In an earlier letter, they suggested that

If the United States is going to continue leading in all of these technology sectors, we can no longer continue to ignore the fact that current eligibility jurisprudence has had a dramatic negative impact on investment, research, and innovation. The lack of clarity has not only discouraged investment in critical emerging technologies, but also led the courts to foreclose protection entirely for certain important inventions in the diagnostics, biopharmaceutical, and life sciences industries. At a time when the United States is struggling to contain and treat the worst global pandemic in more than one hundred years, it is simply astounding that current jurisprudence makes it virtually impossible to obtain many patents in the diagnostic methods and precision medicine sectors.

The Senators asked for “a pilot program directing examiners to apply a sequenced approach to patent examination”:

This pilot program would require selected examiners—and applicants who voluntarily elect to participate—to engage in a full examination of the grounds of patentability and then, once that process is complete, a full examination of the grounds of eligibility.

In response to this request, the USPTO has announced a “Deferred Subject Matter Eligibility Response (DSMER) Pilot Program” for nonprovisional patent applications, which is scheduled to launch on February 1, 2022.

As described in the Federal Register, participants in the pilot will be

permitted to defer responding to [subject matter eligibility] SME rejections until the earlier of final disposition of the application, or the withdrawal or obviation of all other outstanding rejections.

Applicants that qualify will receive an invitation form paragraph in their first Office action on the merits. To accept the invitation, applicants must file a properly completed request form PTO/SB/456.

Categories: Patents