- Dave Robertson
New USPTO Pilot Program for Deferred Response to Eligibility (101) Rejections
Beginning February 1, 2022, with a study period ending in July, the USPTO will invite a selection of qualifying non-provisional patent applications to participate in a pilot program to measure prosecution efficiencies achieved by allowing applicants to defer responding to subject matter eligibility rejections (35 U.S.C. 101). Qualifying applications will be selected based on a first non-final office action having both 101 rejections and other substantive rejections (e.g. 35 U.S.C. 102/103 and 112). Non-provisional applications, including regular and national phase applications will qualify for the pilot, but only the first non-provisional and only for applications not in an expedited program (e.g. Track One or PPH).
The intent of the pilot is to allow prosecution to proceed on the merits pending amendments to the claims to overcome prior art and other rejections, amendments that may also obviate the initial 101 rejection. Once invited, participation in the pilot is elective. Applicants can choose to respond to the 101 rejection or delay their response to that portion of the office action until all other rejections are resolved.
Experience with subject matter eligibility rejections suggests that the prosecution of pilot program applications for applicants electing to defer a response to a 101 rejection will be similar to non-pilot applications where, typically, the 101 rejection is the "last rejection standing." Nonetheless, the pilot program should save time and costs to applicants by deferring responding to 101 rejections early in prosecution, when the initial independent claims are broad and often lacking the detailed elements required to overcome the prior art. Experience shows that additional detail is often the key to unlocking an examiner's resistance to an allowance in view of USPTO Guidance regarding subject matter eligibility.
Therefore, this pilot has the potential to reduce overall prosecution time as well as focus prosecution on the substantive issues while holding the eligibility issues in abeyance. More information on the deferred response program can be found in the Federal Register here.