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.

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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.

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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.

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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.

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