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.
  • The 12-month and three-month average invalidation rates have likewise fallen (from 64.7% to 61.9%, and from 72.1% to 48.4%, respectively).
  • The three-month average recently hit its lowest rate—48.4%—falling below 50% for the first time.

Presumably Berkheimer and its progeny (Aatrix and Exergen)—which held that the “well-understood, routine and conventional” inquiry of Step 2B is a question of fact—have contributed to the declining rates by making courts less inclined to invalidate patents at early stages of litigation. (Of course, as subsequent cases such as Voter Verified v. Election Systems, SAP v. Investpic, and Interval Licensing v. AOL, make plain, successfully establishing the genuine issue of material fact needed for a patentee to survive early dismissal is by no means as simple as it may appear.) Of the 70 post-Berkheimer decisions through the end of June 2018, there were 25 decisions containing at least one citation to Berkheimer; 20 decisions containing at least one citation to Aatrix; and five decisions containing at least one citation to Exergen. Ironically, however, of the 25 decisions citing Berkheimer, 15 found invalidity, with only 10 finding validity, a higher invalidation rate than that of the recent cases not citing Berkheimer. Apparently courts primarily cite Berkheimer in order to acknowledge it before distinguishing it! On the Federal Circuit-watching front, Judge Moore now has the sole distinction of being part of the greatest number of Section 101 decisions (35), as well as the greatest number of pro-eligibility decisions (7). Judges Clevenger, Mayer and Schall, in contrast, have yet to join a pro-eligibility decision in any of the cases that we’ve analyzed.

In my own prosecution practice I’ve noted a recent uptick in the allowance rate of many examiners in the 36XX art units, with several examiners that had hitherto never allowed a single case allowing multiple cases during calendar year 2017.  This piqued my interest, and I decided to conduct a more robust statistical evaluation to see whether my personal experience would bear out more generally.

Signs of Recovery

My evaluation computed the aggregate allowance-to-abandonment ratio in each of the 36XX art units in calendar years 2013 through 2017.  As expected, the allowance-to-abandonment ratio plunged precipitously in calendar year 2015—the first year that the effects of Alice truly began to be felt—and continued to decline in 2016.  However, the ratio begins to increase again in 2017, with a year-over-year ratio change of 1.62 (a 62% increase) across all the 36XX art units, following a ratio change of 0.9 (a modest decline) the year before.  Perhaps more tellingly, the art units entitled “Data Processing: Financial, Business Practice, Management, or Cost/Price Determination”—traditionally the hardest-hit by Alice—experienced a mean ratio change of 2.68 (a significant increase) from 2016 to 2017, after a ratio change of 0.67 (a moderate decline) the prior year.  The hard-hit 2680s and 2690s experienced even greater recoveries.

Continue Reading Thawing in the 3600s? An Updated Look at Allowance Rates Post Alice