Recent Patent Program Updates by the United States Patent and Trademark Office

1. USPTO Launches New Pilot Program to Improve Efficiency of Utility Patent Application Examination.

In response to concerns expressed by way of a letter sent from Senators Thom Tillis (R-NC) and Tom Cotton (R-AR), the United States Patent and Trademark Office (“USPTO”) has launched a “Deferred Subject Matter Eligibility Response (DSMER) Pilot Program” for non-provisional patent applications. The program launched on February 1, 2022 and ends July 30, 2022 (subject to earlier termination or extension). Participants in the pilot program will be eligible to defer responding to subject matter eligibility rejections under 35 USC Section 101 until the earlier of final disposition of the application or the withdrawal or obviation of all other outstanding rejections, i.e., full assessment of patentability of the claims for issues of anticipation, obviousness, written description/enablement/indefiniteness, etc.

This pilot program is intended to address the current inconsistency in the law regarding subject matter eligibility compared to the (relatively) well-established and consistently applied law in other areas of patentability by ensuring full examination for all non-subject matter eligibility issues before considering subject matter eligibility of the claims. This “sequenced” approach to examination of patentability will be offered to qualified applicants by way of an invitation form paragraph contained in a first Office Action on the merits, and can be accepted by the selected applicants by filing the proper completed USPTO request form when responding.

Applications which are eligible for consideration for inclusion in the pilot program are original non-provisional utility patent applications or international applications that have entered the national stage of prosecution, and which:

a. include claims that raise both subject matter eligibility and non-subject matter eligibility issues;

b. have not been accorded special status or otherwise had examination advanced out of turn; and

c. do not claim the benefit of an earlier filing date of any U.S. prior non-provisional application.

Eligible applications may claim the benefit of an earlier filing date of any prior international application or international design application designating the United States. Eligible applications may also claim priority under 35 USC 119, 365(a), 365(b), 386(a), or 386(b) to any prior application filed in the United States or in a foreign country, including provisional applications, international applications, and international design applications designating at least one country other than the United States.

2. USPTO Proposes Electronic Patent Certificate Issuance.

As has been the case for other national patent offices, the USPTO is proposing to implement electronic patent issuance, i.e., providing electronic-only patent certificates in lieu of the current practice of mailing hard copy certificates of issued patents. An optional paper ribbon copy will still be available for purchase. The USPTO is accepting comments on the proposed rule through February 14, 2022.

The intent of the proposed rule is to reduce the time required to access issued patents by as much as two weeks. However, the rule also has the potential to impact filing progeny patent applications. Currently, under US patent practice an Issue Notification is sent following payment of the issue fee, providing the patent number and date of issue. The hard copy paper ribbon certificate then issues, perhaps 2-3 weeks after the mailing date of the Issue Notification.

Under the proposed rule, the gap between the mailing date of the Issue Notification and the availability of the patent certificate would be reduced to one week. In the United States any continuation, divisional, or continuation-in-part patent applications must be filed on or before the issue date of the parent patent application to preserve the claim of priority. Clients who are considering filing a follow-on application to an allowed parent application would be wise to do so well before receipt of the issue notification. A good practice to adopt is to have a decision on filing any continuation, divisional, or continuation-in-part patent applications in place no later than the date the issue fee is paid.