What Is the Patent Office Deferred Subject Matter Eligibility Response Pilot Program? Episode 133

Background on USPTO Pilot Programs

The Patent Office is always trying out different kinds of pilot programs to streamline procedures or to let you do certain things that aren’t necessarily part of the normal rules for getting your patent examined. I’ve talked about several of these before.

There’s a pilot program to get another bite at the apple during examination without paying extra fees. There’s a pilot program for getting your application bumped to the front of the line if it’s COVID-19-related. And there are a few others too.

One that was recently announced is called the Deferred Subject Matter Eligibility Response Pilot Program. So, what’s this all about? To understand the problem they’re trying to solve, we have to go all the way back to the fundamental requirements to get a patent.

Patent Requirements and Subject Matter Eligibility

Your invention has to be new, useful, and non-obvious—I’ve talked about those a lot. But it also has to be subject matter eligible.

Certain things like mathematical formulas, scientific principles, and abstract ideas are not patent-eligible. You cannot get a patent on these, even if your mathematical formula is new, useful, and non-obvious. It’s considered more like a product of nature—something that already existed—and thus an abstract idea.

Gray Areas: Business Methods and Software

One of the gray areas involves business methods. For example, let’s say you’re Netflix and you were the first to come up with a subscription model for mailing DVDs out as rentals. No one had done it before. You invented this type of subscription model. That kind of thing sits in a gray zone.

Software patents also fall into a gray area. If you’re doing something that people can already do, and you’re just saying, “do it on a computer with software,” oftentimes that’s not going to be eligible.

The Alice Decision and Its Ripple Effects

I’ve talked about this case before—Alice v. CLS Bank in 2014. The case involved claims for software that performed financial transactions. The Supreme Court said the claims were directed to an abstract idea, and therefore not patent-eligible.

But the Court also said that it wasn’t declaring all software claims ineligible—just the ones in that particular case. That made it difficult because it left things open to interpretation.

After Alice, there were several other major cases like Bilski, Mayo, and Myriad, followed by Patent Office memos and Federal Circuit cases like Berkheimer and Enfish. Patent attorneys have been trying for years to figure out how to write claims and what the software has to do to be patentable.

Constantly Changing Guidelines

The Patent Office keeps coming out with new guidelines on how to determine what counts as subject matter eligible, and these guidelines keep changing. They’ve issued flowcharts and examples—but then courts issue new decisions that contradict or complicate previous ones, making it hard to know whether your business method or software patent will be eligible.

There can be other types of ineligible subject matter, but this issue mainly affects software and business methods. If you’ve created a physical object, eligibility usually isn’t a problem.

Resources and Examples

If you want to see the table of cases and flowcharts, you can find them on the Patent Office website. You can probably get to them by Googling “USPTO patent eligibility examples and flowchart.”

As of May 2022, the most recent examples on the site were from 2019. There’s also a 37-page PowerPoint presentation from February 2022 called Subject Matter Eligibility USPTO Guidance and Policy.

The Eligibility Flowchart

Here’s a breakdown of the flowchart:

• Step 1: Is the claim directed to a process, machine, manufacture, or composition of matter?

If no, it’s not patent-eligible. If yes, move to the next step.

• Step 2A: Is the claim directed to a judicial exception—such as a law of nature, natural phenomenon, or abstract idea?

If no, it’s patent-eligible. If yes, continue to part 2A.

• Step 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception?

If yes, it’s eligible. If no, it’s not eligible.

If you’re thinking, “What the hell does ‘significantly more’ than a judicial exception mean?”—you’re not alone. Every patent attorney struggles with this. You really have to look at examples where courts or the Patent Office ruled one way or another to identify patterns and factors that push things toward eligibility.

Recent Software Patent Examples

Some recent examples of patents that were found eligible:

• Software for facial detection

• Airbnb’s software for automated determination of booking availability

• Coinbase’s patent for sending Bitcoin to an email address without a miner’s fee

• DoorDash’s patent for automated vehicles for last-mile deliveries

These are just the titles. You have to look at the actual claims to see how and why they were allowed.

But—and this is a big but—any new case can change the analysis. Something allowed last year might not be allowed this year, and vice versa. It’s a moving target.

Introducing the Deferred Subject Matter Eligibility Response Pilot Program

This brings us to the topic of this episode: the Deferred Subject Matter Eligibility Response Pilot Program.

When you get a rejection from the Patent Office, it can be for multiple reasons. You might get a subject matter eligibility rejection and a novelty or obviousness rejection. Normally, you have to respond to all rejections.

But let’s say you spend lots of time and money fighting the subject matter eligibility rejection—only for the examiner to reject your claims anyway because they’re obvious. Then you’ve wasted effort on something that didn’t matter.

That’s the problem the pilot program is trying to address.

How the Pilot Program Works

Under this pilot program, you’re allowed to defer responding to the subject matter eligibility rejection. You can focus first on the novelty and obviousness arguments.

If you can’t convince the examiner that your invention is new and non-obvious, then it’s a moot point whether it’s subject matter eligible. You can defer the eligibility argument until the final rejection—usually the second rejection.

Here’s how it works: if the Patent Office rejects your application for subject matter ineligibility and other grounds, the examiner may invite you to be part of the pilot program. You’ll then fill out a form agreeing to defer the subject matter eligibility response.

Who knows—by the time you get the final rejection, the rules on eligibility might have changed, making it easier to get an allowance.

Purpose and Practical Benefit

The point is, the Patent Office is allowing applicants to defer dealing with the most complex part of examination—subject matter eligibility—until later.

There are some other rules about being in the pilot program, but the gist is that you focus your initial response on novelty and non-obviousness and defer the eligibility arguments to a later stage.

Should You Participate?

If you get a rejection for lack of subject matter eligibility, discuss it with your patent attorney. You may want to defer responding to that part of the rejection if you’re invited to join the program.

I’m Adam Diament, and until next time—keep on inventing.