Delaying Eligibility at USPTO Seems to Have Limited Appeal

Patent attorney Heath Sargeant spoke with Law360 about a pilot program that allowed patent applicants to postpone dealing with patent eligibility rejections. Earlier this year, the U.S. Patent and Trademark Office (USPTO) launched the Deferred Subject Matter Eligibility Response pilot program. The program ended on July 30 with only one-third of the patent applicants invited to participate in the program accepting the offer. Mr. Sargeant commented that the program sounded attractive, since by adding details or narrowing the patent's claims to address earlier inventions, an examiner's contention that the patent covers only an abstract idea can often be overcome. Mr. Sargeant noted that most of his colleagues sense that doing so often has limited benefits, and can present risks.

"They have expressed the concern of, 'Why procrastinate if there's going to be bad news?'" he said. "Meaning that if you know that you're going to have issues, why wait to address them until you've addressed some of them?"

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