The United States Patent and Trademark Office has introduced the Deferred Subject Matter Eligibility Response (DSMER) Pilot Program as part of its ongoing effort to improve patent examination efficiency and address long-standing concerns surrounding subject matter eligibility under 35 U.S.C. § 101. For patent applicants, particularly those in software, fintech, biotechnology, and artificial intelligence, this pilot program represents a meaningful procedural shift that could influence prosecution strategy, costs, and timelines.

Subject matter eligibility has been one of the most challenging aspects of patent prosecution in recent years. Following landmark Supreme Court decisions such as Alice v. CLS Bank and Mayo v. Prometheus, patent examiners frequently issue early rejections asserting that claims are directed to abstract ideas, laws of nature, or natural phenomena. These Section 101 rejections often appear in the first Office Action and can stall prosecution before applicants have the opportunity to clarify claim scope, amend structural features, or address novelty and non-obviousness. The DSMER Pilot Program is designed to address this bottleneck.

Under the DSMER Pilot Program, eligible patent applicants are permitted to defer responding to a Section 101 rejection that appears in a first Office Action on the merits. Instead of being required to immediately argue or amend claims to overcome the subject matter eligibility rejection, applicants may choose to focus their response on other issues raised by the examiner, such as prior art rejections under Sections 102 and 103 or clarity issues under Section 112. The deferred response to eligibility can then be submitted at a later stage in prosecution, after the record has been more fully developed.

The USPTO’s rationale for this program is grounded in efficiency and fairness. Subject matter eligibility determinations often depend heavily on claim construction and an understanding of what is actually novel about the invention. By allowing applicants to first address prior art issues, the examiner and applicant can better identify the inventive concept before revisiting whether the claims are directed to patent-eligible subject matter. In many cases, amendments made to overcome prior art naturally resolve eligibility concerns, potentially eliminating the need for protracted Section 101 arguments altogether.

For patent applicants, the DSMER Pilot Program offers several strategic advantages. It can reduce early prosecution costs by allowing applicants to postpone complex legal arguments related to eligibility until they are truly necessary. It also gives applicants greater flexibility in shaping their claims based on substantive examination feedback, rather than prematurely locking into eligibility positions that may later become problematic. This is particularly valuable in rapidly evolving technology sectors where claim precision is critical.

However, participation in the DSMER Pilot Program is not automatic. Applicants must affirmatively request deferral and comply with the program’s procedural requirements. There are also limits on when and how often deferral may be used, and applicants must ultimately address the eligibility rejection before allowance. This makes it essential to carefully evaluate whether deferral aligns with the overall prosecution strategy for a given application.

From a broader perspective, the DSMER Pilot Program reflects the USPTO’s acknowledgment that subject matter eligibility has become a pain point for innovation. While the program does not change the substantive law of Section 101, it offers a procedural workaround that may ease uncertainty and reduce friction in the patent system. For startups and individual inventors, this could make patent protection more accessible by lowering early-stage barriers.

Attorneys practicing before the USPTO should expect this program to influence how initial Office Actions are handled and how prosecution timelines are managed. Strategic decision-making will be critical, as deferring a response can be beneficial in some cases but risky in others. A misstep could result in prolonged prosecution or missed opportunities to resolve eligibility issues efficiently. Navigating programs like the DSMER Pilot requires a nuanced understanding of patent law, examiner behavior, and long-term portfolio goals. If you are considering filing a patent application or responding to an Office Action involving subject matter eligibility, experienced guidance can make a significant difference. Contact The Plus IP Firm today. Call Mark Terry at 786-443-7720 or email [email protected] to schedule a consultation. The Plus IP Firm helps innovators leverage evolving USPTO programs to protect their inventions and move through patent prosecution with confidence.