In my post back in March 2018, I analyzed an upward change in allowance rates in the 36XX art units based on my practitioner’s observation that inventions were finally beginning to be more frequently found eligible for patenting following a string of pro-eligibility Federal Circuit decisions.

It has now been 1.5 years since the USPTO issued its 2019 Revised Patent Subject Matter Eligibility Guidance in January 2019, specifying that patent prosecution henceforth should cite to the Guidance rather than directly to caselaw, and over half a year since the USPTO’s follow-on October 2019 Patent Eligibility Guidance Update. Since the 2019 Guidance represents one of the most significant changes in patent eligibility analysis since the Supreme Court’s 2014 Alice decision, I thought it was high time for another inquiry into the state of eligibility findings in the USPTO.


Continue Reading Further Thawing: Patent Eligibility Rates Continue Trending Upward in the Wake of USPTO Guidance

On April 30, the Federal Circuit issued a precedential opinion in Uniloc v. LG Electronics, concerning claims to a software invention for a local communication system that reduced latency for parked secondary systems, e.g., when connecting a local wireless peripheral device to a computer.

Although the court’s reasoning itself is not of particular note,

On Thursday, April 23, the USPTO released a new study entitled “Adjusting to Alice: USPTO patent examination outcomes after Alice Corp v. CLS Bank International.” The report illustrates the dramatic impact of two developments in the application of § 101 law: first, the Supreme Court’s Alice decision in June 2014, and—second and more recently—promulgation to patent examiners of the USPTO’s internal documents providing more specific guidance for how to apply the doctrine of Alice.

Although the illustrated results are hardly unexpected to anyone following the developments of § 101 law over the years, the study provides intuitive graphical summaries of the trends over time, specifically with respect to the metrics of (a) percentage of first actions with a § 101 rejection, and (b) variability of the issuance of § 101 rejections by examiners. (Metric (b) is of note, since it tracks the level of uncertainty, which—as the USPTO mentions in the introduction—tends to reduce investment as it rises.) Specifically, Figures 1 and 2 (reproduced below) illustrate how Alice led directly to dramatically elevated levels for both metrics; similarly, Figures 3 and 4 illustrate how the USPTO’s January 2019 Patent Subject Matter Eligibility Guidance (PEG)—and to a lesser extent its earlier Berkheimer memorandum—led directly to equally dramatic reductions in the metric levels.


Continue Reading New USPTO Study Examines the Effects of Alice and USPTO Guidelines on Patent Eligibility

In April, Senators Coons and Tillis proposed a draft framework for legislation reformulating the standards for determining patent eligibility under § 101 of the Patent Act. The framework largely codified the Patent Office’s latest internal eligibility standards that went into place in January 2019, formulating a closed list of categories excluded from patent eligibility and creating a “practical exception” test to ensure that such categories are construed narrowly.

On May 22, Senators Coons and Tillis were joined by Representatives Collins, Johnson and Stivers in proposing a bicameral draft bill containing—among other things—new text for § 101, as well as new supporting definitions in § 100.

It should be noted that the draft bill is still very much open to discussion, with hearings of the Senate Judiciary Subcommittee on Intellectual Property to be held on June 4, 5 and 11. That said, I’ve summarized some of the draft language’s key points below:


Continue Reading Patent Eligibility Reform in Congress: Updates on the Coons/Tillis Proposal

As my prior post on the 2019 Revised Patent Subject Matter Eligibility Guidance indicated, I initially anticipated only a modest uptick in allowability rates as a result of the new guidance.  After analyzing the accompanying examples, however, I concluded that the effect would likely be markedly more profound.  Subsequent conversations with examiners—many of whom have now agreed to drop their long-standing eligibility rejections—have only confirmed that belief.

The examples provide analyses of 10 claims as part of six new hypothetical inventions.  Significantly, of the 10 claims analyzed, only three are held to be ineligible, and those three are notable for their conspicuous brevity and breadth (44 words / two elements; 71 words / two elements; and 81 words / three elements, respectively).  Each of the inventions for which a claim is held ineligible—namely, Examples 37, 40 and 42—also includes an example of an eligible claim, thereby perhaps implying that most inventions should be able to be made eligible as long as the applicant is willing to claim them with sufficient specificity.  If so, this would be in marked contrast to earlier post-Alice PTO practice, in which examiners—perhaps due to uncomfortable uncertainty about what was eligible and what was not and fear of being reprimanded for granting a patent on something that might subsequently be found ineligible, perhaps due to the ease of making rejections by broadly applying the holdings of particular Federal Circuit cases—were frequently committed to their § 101 rejections, maintaining the rejections despite all applicant attempts at claim amendments.


Continue Reading The 2019 Eligibility Guidance by Example

[This post was updated on Jan. 17, 2019]

On Jan. 4, the Patent Office released the long-awaited 2019 Revised Patent Subject Matter Eligibility Guidance, which governs the Office’s examination procedure for evaluation of patent subject matter eligibility under 35 U.S.C. § 101.

The new guidance distinctly changes the tone of § 101 discourse to one more in favor of eligibility than in years past.  In the same way that the tone of prior Office guidance in the wake of Alice v. CLS Bank appeared to lean in favor of findings of ineligibility, despite a lack of concrete legal standards compelling this result, the more pro-patent feel of the new guidance will likely by itself lead to an uptick in allowance rates.  Tone aside, however, beyond signaling an increase in the perceived permissibility of examiners finding patents eligible, there appears to be little additional substance in the new guidance that could be used to compel a skeptical examiner to find a given claimed invention to be patent-eligible.


Continue Reading The 2019 Eligibility Guidance: A Change in Tone, if Not in Substance

Much ink has been spilled in recent times on the standards for, and outcomes of, patent eligibility questions under § 101.  Consider, for example, USPTO Director Andrei Iancu’s remarks in September about providing additional guidance to Patent Office examiners, and various analyses of invalidation rates in the federal courts. (We touched on invalidation rates ourselves in our Bilski Blog update in August, at which time the Federal Circuit’s cumulative invalidation rate since July 2014 was hovering north of 88 percent.)

One topic has received little attention, however: The rulings of the Patent Trial and Appeal Board on pre-grant § 101 examiner rejections appealed by applicants.  In my opinion, this constitutes the proverbial elephant in the room for patent prosecutors.


Continue Reading Still No Path Out of the 101 Swamp?

Since our last update in June 2017, all the invalidation averages for decisions finding lack of subject matter eligibility have trended slightly downward in the federal courts. Specifically:

  • The overall percentage of decisions invalidating patents under § 101 since we started tracking statistics in July 2014 has fallen slightly—from 67.5% to 66.0%—year over year.