DSMER Pilot Program

MARK TERRY, ESQ.

The U.S. Patent and Trademark Office introduced the Deferred Subject Matter Eligibility Response, or DSMER, Pilot Program to improve examination efficiency and address recurring difficulties under 35 U.S.C. § 101.

Eligible applicants may defer responding to a subject-matter eligibility rejection appearing in a first Office Action on the merits. They can instead focus initially on prior-art issues under Sections 102 and 103 and clarity or written-description issues under Section 112.

The eligibility response is then addressed later, after the record and claim scope have been more fully developed. In some applications, amendments made to overcome prior art may also resolve or narrow the Section 101 issue.

The program can reduce early prosecution costs and give applicants more flexibility, but participation is not automatic. Applicants must request deferral, satisfy the program’s requirements, and ultimately resolve the eligibility rejection before allowance.

The strategic value of deferral will depend on the technology, the examiner’s other rejections, and the applicant’s portfolio goals. Software, fintech, biotechnology, and artificial-intelligence applicants should evaluate whether the pilot supports a more efficient prosecution path.