Backlog for PTAB ex parte appeals reverses course, up across almost all tech centers

While Chief Judge of the PTAB, David Ruschke took pride in the PTAB’s work in reducing the backlog of ex parte appeals. And for good reason. As we previously reported, the historically long backlog for appeals plunged during his leadership. But since Ruschke stepped down from his position, the backlog has been going back up.

The USPTO recently released the December 2018 ex parte statistics, showing some significant changes in appeal backlog from the previous year.

As can be seen, almost every tech center experienced an increase in the pendency of decided appeals from the prior year. The two exceptions are 3600, home to business methods and software-related tech, and 3700, home to medical devices and mechanical tech. Looking at similar graphs of previous months, there are a few ways to interpret these data.

The first interpretation for the overall backlog increase is that PTAB judges are focusing their production work less on ex parte appeals. Assuming the number of judges has not considerably changed across tech centers, we can see the production difference most apparently in the number of total decisions. In 2017, there were about 11,899 ex parte appeal decisions whereas in 2018, there have been 8,928 to date. One caveat to the 2018 numbers is that as of January 16, 2019 the USPTO is still delayed in rolling out all of December 2018’s decisions. But the total number for 2018 should only shift upward by a few hundred decisions at most. This means that 2018 saw judges deciding fewer appeal decisions than in 2017.

We may assume that the impressive backlog reduction under Ruschke was the exception rather than a sustainable norm. With the ramping up of hiring PTAB judges to accommodate post-grant trials involved training new PTAB judges, which required a period of judges to work on ex parte appeals. Speculating, the PTAB may have seen fit to shift priorities, especially with the ex parte appeal backlogs at historic lows. In August of 2018, Scott R. Boalick became acting chief judge after Ruschke stepped down to become a special adviser to the USPTO patent division. It is unclear whether Boalick has the same enthusiasm for reducing backlog as Ruschke or whether he is interested in other issues, such as quality of decisions.

Further, the change in backlog may be the simple result of monthly fluctuations. But going back to previous months, some tech centers do not seem like a flash in the pan. For example, tech center 1600 increased a significant 4 months each of the three months, fundamental examination disputes being appealed specific to the technology in these tech centers might be at issue. An increase of pendency of decided appeals can be the result of increased appeals. This can indicate a measure of perceived unreasonableness by Examiner rejections assuming applicants appeal at a greater frequency with more unreasonable rejections. What exactly is the specific reason for this consistently higher backlog in TC1600? It’s unclear. It could stem from great uncertainty regarding subject matter eligibility in the diagnostics space.

Another tech center with a skyrocketed backlog is 2900, home of design patent applications. This was consistently and significantly higher for three consecutive months including December 2018. True, the sample size for design appeals is much smaller than other tech centers so the much higher standard deviation contributes to increased flux. See below.

graphanticipat

But at the same token there could be grounds of rejection specific to design applications that are getting appealed. The trickiness here is that since design applications are not published, the e-Foia page does not publish these appealed decisions so Anticipat currently does not keep track of them.

One tech center that consistently continued to decrease its backlog was 3600, home of software/business method applications. At a current backlog of 17 months, it makes the strategy to pursue an appeal ever more appealing, especially in the face of difficult rejections with no progress with the examiner in sight. Knowing the backlogs in real-time for an application you are pursuing can arm you with the information you need to make the best patent prosecution decision.

November 2018 PTAB Appeal Decisions: Record Number of Abstract Idea Reversals, Reversal Rate Dramatically Increases

Ever since a slew of Federal circuit decisions in early 2018, we predicted that many abstract idea rejections would be reversed by the PTAB to comply with the case law. This did not immediately come to pass, as we pointed out. But our prediction has turned out to be prophetic, even if it took longer than predicted. We report here that the PTAB continues its trend of overturning these types of rejections on appeal. In November, it was relatively dramatic, given the high number of abstract idea appeals decided.

First some context for why we have been tracking abstract idea (Alice) rejections so closely at the PTAB. While Examiners can apply multiple types of rejections under Section 101, one category stands out as the most arbitrary: patent-eligible subject matter.

patentineligiblesubjectmatter

This so-called judicial exception to eligibility has no real statutory foundation, but is instead rooted in Supreme Court decisions dating back to the 19th century. Today, the most frequently applied–and controversial–of the judicial exceptions is abstract ideas. And over the past 10 years, this type of judicial exception has crept into almost every technology field, but especially computer-related inventions.

November 2018 was a fairly normal month in the number of total appeal decisions, at 708. The number of appeal decisions that included an abstract idea rejection (200) was proportionally higher than previous months, but not by much. In fact, previous months having decisions with abstract idea rejections have exceeded 200.

abstractidearev2

But November was remarkable in its number of reversals. Of these 200 decisions, the Board completely reversed 42 times–a record number of reversals for this type of rejection. This bested the previous record in September 2018 with 37 reversals, but with far fewer abstract idea decisions to get there.

November’s high number of abstract idea reversals with fewer total decisions translates into a reversal rate much higher than previous months. That is, November took far fewer abstract idea decisions to yield this record number of reversals, a complete reversal rate (all claims reversed) of 21%. The last time the reversal rate exceeded 20% was back in February 2017 (almost two years ago), when the total number of abstract idea decisions for that month was far fewer. In fact, the 31 such decisions in February 2017 was a small fraction of November’s 200 decisions, making February 2017 at least partially due to a statistical blip. With such a high number of abstract idea decisions in November, it seems like November’s high reversal rate is not an anomaly, but instead a new normal.

abstracideareverberk2

This confirms our predictions that Berkheimer and other factors are contributing to the PTAB reversing Examiner rejections at an unprecedented rate.

Through the Anticipat Research database, you can find these reversals for Board analysis that is persuasive and/or relevant to a related matter you may be working on. You can filter based on Examiner, Art Unit, Tech Center, classification, and many more filters.

Besides showing high-level trends of reversal rates, as described above, Anticipat allows for targeted appeal lookups for specific grounds of rejections or issues. Here, by narrowing the search to November 2018 for the subissue under Section 101 of Abstract Idea, you can access every relevant decision. See filters outlined in red below.

And of course knowing how the Board is reversing Examiners can guide your prosecution strategy.

With recent revised subject matter eligibility guidance, and comments from high-level USPTO personnel, the USPTO is poised to continue to relax the high standard for patent-eligibility, especially for abstract idea rejections. The PTAB is one front that should continue to support this relaxation. Expect more reversals at the PTAB for abstract idea rejections. And subscribe to Anticipat to stay current on developments at the PTAB.

Top 10 Anticipat Blog Posts for 2018

With a new year upon us, it’s sometimes interesting to look backwards. 2018 for us was a year of good blogging. Here, we recap the most popular posts on Anticipat’s blog in the year of 2018.

Top 10 most visited posts in 2018 in order of highest unique page views

1) The PTAB quietly hit a milestone in June in reversing Alice Section 101 rejections

2) Update: These firms overturn abstract idea (Alice) rejections on appeal at PTAB

3) Understanding the Examiner Answer: analyze anything new and contest as needed

4) Berkheimer’s biggest effect on PTAB outcomes

5) How the biggest patent firms (Finnegan, Fish, Knobbe) do on appeal

6) Obviousness Reversal Rates Across Tech Centers: Unexpected Results

7) Expect the Berkheimer-driven patent-eligibility pendulum to swing at the PTAB

8) Business methods making comeback on appeal at the Board–Citing Berkheimer PTAB panel holds Examiner must show evidence

9) Board panel citing Berkheimer to reverse judicial exception rejection to diagnostics claims: no evidence

10) Number of abstract idea rejections decided at PTAB for August 2018 higher than ever, but reversal rate treads water

Of course, the order of these posts does not completely correlate with the most interesting or relevant content. Some of the popular posts were published at the beginning of the year, with more time to be accessed, while other posts were published late in the year. Also, some posts were arbitrarily provided to be shared on higher-profile media, giving it a broader audience.

A big lesson from these posts is that patent-eligibility, Berkheimer and abstract ideas were very interesting topics in 2018.

The PTAB continues to increase reversal rate of abstract idea rejections

Recently, the state of patent-eligibility (especially abstract ideas) has been the talk of the patent bar. Yesterday, revised examination guidelines took effect, changing the direction for examiners to examine abstract ideas at the USPTO. For its part, the PTAB has been playing a role in the abstract idea flux as applicants increasingly turn to the Board for overturning difficult rejections. Here, we report that the reversal rate for abstract ideas continues to climb slightly higher.

October 2018 had 30 decisions out of 185 total decisions in which the Board wholly reversed abstract idea rejections, or a reversal rate of 16.2%. This is up from the previous month (September) and it continues a largely unbroken streak of 5 consecutive months with relatively high reversal rates. In fact, during this streak, each month experienced an abstract idea reversal rate over 15% with the sole exception of September, which came close at 14.4%. Prior to this streak, the PTAB had a much gloomier streak for abstract idea appellants, where the reversal rate for abstract ideas was below 15% for eight consecutive months, as we reported here.

Below is a snapshot of October 2018 being queried for abstract idea rejections on Anticipat’s Research page. You can find all these decisions for this time frame, for other time frames, and a whole host of other issues on appeal to guide your prosecution strategy.

researchab

To access this and other types of appeals information using Anticipat’s Research database, feel free to sign up for a 14-day trial.

With new leadership at the USPTO, and as seen from recent appeals data, the pendulum of patent-eligibility continues its slow swing in favor of applicants, even if this swing is at times unpredictable.

Section 101 Alice (Abstract Idea) Appeal Decisions Surge, but Reversal Rate Stays Steady

Abstract idea rejections (mostly Alice-impacted in computer-implemented inventions) are experiencing a surge at the PTAB. We previously reported that August 2018 saw a record number of abstract idea appeals decisions. But the following month shattered this record number of appeals decisions by a large margin. Practitioners have been increasingly appealing abstract idea rejections and it is dramatically showing itself in the final written decisions. The most recent data show that appeals are a more attractive option to overcoming such rejections with still small but not hopeless odds.

As we previously reported, August 2018 saw a record number of reversals (30) based in part from the equally record number of total abstract idea decisions that month (207). The following month of September saw these records shattered at the PTAB. Even with a modest total increase in the total number of decisions (771 to 840, or about a 9% increase), the number of abstract idea decisions for September increased to 257, a 24% increase.

abstractideanumbers

That surge in abstract idea decisions resulted in a record-setting 37 reversals. So while the total number of abstract idea reversals was impressive, the actual reverse rate (14.4%) stayed relatively level, on par with previous months and far lower than other grounds of rejection. As we reported, June and July saw a Berkheimer bump above the 16% reverse rate.

While the reversal rates of recent August and September months are lower than June and July, considering the substantial number of appeals with these rejections, it appears that practitioners are looking to the PTAB for relief. That is, rather than abandoning cases with determined Examiners standing by their Section 101 rejections, practitioners are increasingly using less-trodden techniques (appeals) with overcoming these rejections. After all, some practitioners view appeals as a last resort, especially in some technology sectors, due to the substantial time commitment to reach a final written decision.

Continue to expect appeal decisions that decide Section 101 rejections to increase, as the unpredictability at the USPTO plays out. Also, check out the new Research user interface that allows you to select the specific issues and subissues that you are interested in.

research2