Since 2014, the USPTO has recognizably tried to come up with a holistic framework for determining subject matter eligibility for all sorts of patent applications. In particular, several subject matter eligibility guidelines have been issued in light of recent Supreme Court cases Myriad, Mayo, and Alice and subsequent Federal Circuit decisions. But this endeavor has not been easy. Especially in making a two-step solution for judicial exceptions work for all Examiners across all technology centers. Since appeals can be thought of as an ultimate mechanism for holding Examiner rejections accountable, here we look at how the Examining corps is doing with abstract ideas by looking at how the rate of reversing abstract idea rejections on appeal compares across tech centers.
By far the most common of the judicial exceptions—and the most elusive–is the abstract idea. Further to our recent report, abstract idea rejections are ubiquitous across all tech centers. They also get appealed in every tech center, but the reversal rate is far from uniform. The following shows the numbers and reversal rates of each tech center over the course of the past year and a half. We discuss two noteworthy tech centers.
The first noteworthy tech center is 3600, where the bulk of the abstract idea appeals take place. This tech center, home to much of the USPTO’s business methods/software applications, has a very low reversal rate: 14%. In fact, the large volume of appeals in this tech center alone seems to substantially drag down the entire overall abstract idea reversal rate. See below graph.
The second noteworthy tech center is 1600. Even though the overall reversal rate has gone down since our last report (17% to 16%), tech center 1600, home to the biotech and pharma technical art, has actually solidified at a much higher rate. Specifically, this tech center’s reversal rate has increased from a rate of 28% to 37%. Even while having a limited sample size of 35 abstract idea decisions, this finding is significant. The probability that this reversal rate is higher just due to chance is quite low.
Why the higher-than-normal reversal rate in biotech? A couple possible reasons. First, possibly most intuitively, Examiners in the biotech/pharma technical space may be issuing and maintaining bad abstract idea rejections more frequently than Examiners in other tech centers, forcing the applicant to appeal. And the judges that are deciding these appealed applications are siding with the appellant more often than in other tech centers.
To the defense of Examiners in tech center 1600, the abstract idea doctrine is not as developed in the biotech/pharma space as other technologies. More prominent patent-eligibility cases in this technical space have focused on the other judicial exceptions: laws of nature (Mayo) and naturally occurring phenomena (Myriad). The lack of much abstract idea case law in biotech may create a blurry boundary line between patent-eligible inventions and patent-ineligible abstract ideas. Plus, with the infusion of computer-technology into life sciences, the applicability of other abstract idea case law has added further complexity to the analysis. Thus, Examiners may feel restricted in allowing a case, waiting for a Federal Circuit to provide a green light to support their position. But the Board seems not to be waiting around. Instead, the Board appears to be supporting the appellant’s position more often than in other tech centers, at least by saying that the Examiner has not met his/her burden of showing patent-ineligibility.
The second reason is that biotech/pharma applicants may have high stakes and/or resources to devote to pursuing broad claims than others (e.g., software applications). Compare these stakes and resources with where the bulk of abstract idea rejections on appeal come from, tech center 3600, where many of the business method applications reside. It is possible that biotech applicants are more motivated and less discouraged from winning on appeal. And as has been shown, not all appellants are equally successful in overturning abstract idea rejections on appeal. And perhaps the applicant or the counsel are driving strategy that fosters a more favorable appeal outcome for abstract ideas.
The USPTO will continue to struggle to strike the right balance between what is patent-eligible subject matter, but having the right appeals data from Anticipat Research can cut right to the heart of how specific grounds of rejection are being overturned on appeal. Even if the reason why remains elusive, biotech/pharma appears to be fertile room to appeal an unreasonable abstract idea rejection.