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.


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It's been one year since the Supreme Court's decision in Alice Corp. v. CLS Bank. On its face the opinion was relatively conservative, cautioning courts to "tread carefully" before invalidating patents, and emphasizing that the primary concern was to avoid preemption of "fundamental building blocks" of human ingenuity.  The Court specifically avoided any suggestion that software or business methods were presumptively invalid.  But those concerns seem to have gone unheeded.  The Court's attempt to sidestep the tricky problem of defining the boundary of an exception to patent eligibility—"we need not labor to delimit the precise contours of the "abstract ideas category in this case""—has turned into the very mechanism that is quickly "swallow[ing] all of patent law.” The federal courts, the Patent Trial and Appeal Board, and the USPTO are using the very lack of a definition to liberally expand the contours of abstract ideas to cover everything from computer animation to database architecture to digital photograph management and even to safety systems for automobiles.

Let's look at the numbers to present an accurate picture of the implications of the Supreme Court’s decision. My analysis is a data-driven attempt to assess the implications of Alice one year out. It is with an understanding of how the Supreme Court’s decision is actually playing out in the theater of innovation that we can better project and position ourselves for what the future holds.

Alice at Court

Table 0 Fed Courts

As of June 19, 2015 there have been 106 Federal Circuit and district court decisions on § 101 grounds, with 76 decisions invalidating the patents at issue in whole or in part.  In terms of patents and claims, 65% of challenged patents have been found invalid, along with 76.2% of the challenged claims. 


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The Palo Alto Area Bar Association (PAABA) and the International Technology Law Association (ITechLaw) are teaming up to provide a luncheon panel discussion on the practical implications of the Alice v. CLS Bank decision. In her dissent to the Federal Circuit Alice decision, Judge Moore predicted that the majority view would result in “the death

Fenwick & West has launched an interactive PTAB Database that details proceedings filed with the USPTO’s Patent Trial and Appeal Board – providing quick and easy access to information about PTAB decisions.

With the creation of PTAB by the U.S. Patent and Trademark Office, core aspects of resolving validity disputes are now governed by newly

By: Robert R. Sachs

By now, we've all heard of the controversy regarding the lax oversight at the USPTO of examiners in the Office's Telework Program–what I'll unofficially dub as "Telegate."  Now, the House Oversight and Government Reform Committee just announced an investigation into the abuses of the program.  

In brief, at the request of the Inspector General, the Office conducted an internal investigation into four allegations: 1) time fraud by examiners, 2) "end loading" of work (waiting until the end of a production period, and then cramming), 3) mortgaging of work (recording work as complete in one production period, and then completing it in a later production period), and 4) improper quality control. The task force that conducted the investigation produced a  32-page report that detailed numerous abuses of the system by examiners, and attempts by managers to correct these abuses that were met with procedural roadblocks, resulting in slap-on-the-wrist penalties. But instead of providing this report to the IG, the Office created a watered-down 16-page version that stated that the investigators were unable to find objective evidence of fraud and abuse, a finding contrary to the facts set forth in the original report.


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On August 24 the USPTO published interim guidelines for its patent examiners on patent-eligible subject matter under the Bilski case.  The guidelines include 8 pages of instructions and first and second accompanying flow charts.  They are interim guidelines because the U.S. Supreme Court has agreed to review the Federal Circuit decision in Bilski and has