In 2014, the US Supreme Court announced its decision in Alice Corp. v. CLS Bank International. The decision ruled that patent claims for computer-implemented inventions may be abstract ideas, making it questionable if they are “patent eligible subject matter.” This has nothing to do with someone else having patented it first (prior art); it is only about whether one can even get a patent on these inventions. This has resulted in seven years of confusion and upheaval as software companies try to find ways around Alice to patent their software. However, the USPTO has a new program, the Deferred Subject Matter Eligibility Response (DSMER) pilot program. Starting February 1, 2022, certain patent applications will receive an invitation to join this program. The program allows the applicant to set aside arguments about the patent eligibility and only address the prior art rejections. Then, once the prior art rejections are overcome, the applicant addresses the eligibility issue. Instead of addressing both prior art and eligibility rejections at the same time, they will be addressed one at a time, prior art and then eligibility. The idea is that this will improve efficiency of the process and improve patent quality. Since this program has not even started, it is hard to know whether the amount of time to get through the process will decrease. One could see where it may even take longer. We will keep you posted, and if you have questions about how this process may affect you, reach out to one of our patent professionals.
Details on the program can be found here.
