The PTAB continues to decide a large number of Alice-based (Section 101 – patent-ineligible subject matter) decisions. December continues both the large number of abstract idea reversals and the high reversal rate, compared to previous months. Expect the appellant-friendly trend to continue with revised USPTO Examiner Guidance, which the PTAB is bound to follow.
December 2018 showed two interesting data points. First, the total number of abstract idea reversals was record-setting. For context, the previous record number of such reversals was in November 2018 with 42. In December, the PTAB quietly crushed this previous record of reversed abstract idea rejections with 58 total such reversals. It was a quiet crushing because the holidays and end-of-year logistics at the USPTO resulted in a long lag-time for decisions to finally publish.
Second, the total reversal rate for these rejections was very high as well. We previously reported that in November 2018, the PTAB hit an abstract idea reversal rate of 20%, which it had not done in quite some time. December continued November’s high reversal rate trend with 58 complete reversals out of 232 total abstract idea decisions, yielding a reversal rate of 25%. The last time the PTAB saw two consecutive months with such a high reversal rate was two years ago. The obvious difference is that two years ago saw much fewer abstract idea appeal decisions.
On January 7, 2019, the USPTO put into effect Examiner Guidance that looks to make it more difficult for Examiners to maintain abstract idea rejections. We have already seen many reversals citing to this Guidance. See below screenshot from Anticipat’s Research Database.
More on this in a follow-up post. Expect in the coming months abstract idea rejections to continue to be reversed at higher rates and at a higher volume.