For the past year, the PTAB has increasingly reversed so-called abstract idea rejections (Alice). But in recent months, the pace of these reversals has been nothing short of remarkable. Here, we report updated February numbers, which show the PTAB continuing to overturn abstract ideas at an unprecedented rate. We also look more deeply into how these rejections are getting overturned. It turns out the Board is increasingly relying on step 2A (Step 1 of Alice/Mayo) thanks to new guidance that makes it more difficult for an examiner’s rejection to hold.
As we recently reported on Patexia, the new examination guidance (effective early January) has fueled reversals at the Board. Now, with increased numbers for February 2019, this effect can now be seen much more dramatically.
In February, there were 61 completely reversed decisions from a total 149 such rejections. This yields an astonishing 41% reversal rate. This is of course astonishing by standards of Section 101 judicial exceptions. We have long reported that many grounds of rejection are overturned by the PTAB (such as Section 112 and Section 102) at even higher rates. But even just over a year ago, the PTAB routinely sided with examiners on abstract idea grounds upwards of 90% of the time. Now the climate is completely different.
Notable changes in reversal rates can be seen from the color-coded timeline events in the graph above. Red refers to when Berkheimer and similar Federal Circuit decisions were decided, which put a higher evidentiary standard on showing that claims did not recite an “inventive concept.” With a little lag, the reversal rate ticked up. Then in the fall of 2018, Director Andrei Iancu started more actively promoting better (more consistent) Section 101 examination, eventually resulting in new 101 Examination guidance shown by the yellow line. The PTAB appears to quickly adapt to case law, guidance and internal cultural changes.
And these results do not appear to be from a sample size distortion (because applicants have already given up). while the total number of abstract idea rejections decided did not reach months seen last year, this is likely due to the PTAB picking up the new year on a slow note, which is historically the case. In fact, February 2019 saw the Board decide more abstract idea rejections than February 2018. See below. And even with the total number of decisions deciding abstract idea grounds of rejections being lower than prior months, it still set a record in the total number of such reversals (61) breaking the previous record of December 2018 (58).
How is the PTAB overturning these rejections? Thankfully, the Anticipat research database makes this question easy to answer, cataloging the specific rationale (tag) that is used in overcoming the rejections. As shown from the following graph, Step 1 (which the USPTO refers to as Step 2A) has now separated itself from Step 2.
A good practitioner will tell you that thanks to the new Section 101 guidance and other case law developments, it is now easier to overcome Abstract Idea rejections. These Board decisions directly show this at the final stage, but results can also be felt farther upstream of these decisions.
Like many USPTO personnel, PTAB judges are quota-motivated. Because of this, end of quarters typically have higher output of decisions. For this reason, expect March 2019 to be a big month in the volume of abstract idea rejections decided and in the total number of reversals. If history is any indication, we could be looking at another record month.