The USPTO recently began its Deferred Subject Matter Eligibility Response (DSMER) program. The program is scheduled to conclude July 30, 2022.
The program might have only a limited benefit but few negative features.
First, the program only applies to applications with both a subject matter eligibility (SME) rejection under 35 USC 101 and a rejection on other grounds (e.g., obviousness). Then, the program allows Applicants to defer a response to the SME rejection only until (a) a “final disposition” or (b) the SME rejection is the only remaining rejection.
Crucially, a “final disposition” can be a final Office Action. So, typically, the program allows Applicants to defer addressing an SME rejection for only one Office Action.
Thus, the benefit of the program is the Applicant does not need to address the SME rejection in the response to the non-final Office Action. Therefore, upon receiving a nonfinal Office Action including an invitation to participate, Applicants can participate via three options: (a) decline to defer the SME rejection, (b) partially defer the SME rejection, and (c) entirely defer the SME rejection.
If the Applicant chooses to (a) decline to defer the SME rejection, then there is no point in participating in the program. Further, responding to an SME rejection can create a substantial amount of file-wrapper estoppel. So, the Applicant’s response would be unlikely to fully address an SME rejection early in prosecution, even without the program.
On the other hand, Applicants might be tempted to (c) entirely defer the SME rejection under the DSMER program. After all, other bases for claim amendments (such as an obviousness rejection) indirectly can address an SME rejection. However, SME rejections ultimately satisfy a different statutory requirement than art rejections or indefiniteness rejections, for example. Therefore, entirely deferring the SME rejection (a’) is more likely to give rise to an extra Office Action including only an SME rejection and (b’) is more likely to limit the Applicant’s options in response to a final Office Action. For example, regarding (b’), an Applicant probably would find it more difficult to file an appeal, if the Applicant never considered the SME rejection.
Therefore, we recommend Applicants (b) partially defer the SME rejection. More specifically, we suggest Applicants carefully evaluate the SME rejection and amend the claims if necessary. However, Applicants should defer arguing the amended features. Therefore, the Applicant can promote prosecution, without creating any prosecution disclaimer by presenting arguments.
There are few negative features to the program. As discussed above, amendments that address other rejections (especially, obviousness rejections) can address the SME rejection, as well. However, these amendments also might not address the SME rejection, resulting in an extra Office Action. In fact, a goal of the program is to determine whether deferring SME rejections results in extra Office Actions.
As another negative feature, an Applicant incorrectly might expect deferring the SME rejection to result in entry of an Amendment after a final rejection. Specifically, under 37 CFR 1.116(b)(3), an amendment after a final rejection may be entered “upon a showing of good and sufficient reasons” for not presenting the amendment earlier. The USPTO has said that participation in the DSMER program is not a “good and sufficient reason” for not presenting an SME amendment earlier. So, some program participants might be surprised, if they expect their SME Amendment to be entered after a final rejection.
Ultimately, Applicants should participate in the program by (b) partially deferring the SME rejection. However, if an Applicant was already engaging in a similar practice (as we recommend), then the program offers limited benefit.
If Modal PLLC can assist you in responding to an SME rejection, please contact us.