Over the past 6 months, 144 ex parte appeals decisions involving 35 U.S.C. 101 have been handed down that specifically deal with the issue of whether the claims at issue are drawn to statutory subject matter. This subject is the most rapidly evolving area of IP law today, and from our experience one of the most ambiguous in view of what seems to be an “I’ll know it when I see it” approach of the Supreme Court’s two part test set forth in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. __, 134 S.Ct. 2347 (2014).
In the 144 decisions, the Board reversed the Examiner’s finding that the claims were directed to non-statutory subject matter in 37 cases–25.7% of the time. Of these 37 cases, 36 involved a reversal as to all claims on appeal.
Compared to the reversal rates for obviousness and novelty (see our other posts), the Board is upholding non-statutory subject matter decisions by Examiners much more often. However, the 25% total reversal rate indicates that even in the unsettled world of section 101, the Board does not agree with the Examiners in 1 out of 4 cases.
The data indicate that the patent-eligibility provision is not being treated by the PTAB as the exception that swallows the rule, which has been the fear of many practitioners observing the steady stream of invalidations on section 101 grounds flowing out of the courts. Instead, the data indicates that a substantial number of cases are, in its judgment, passing the two part test.