The PTAB sets Another Record for Reversing Abstract Idea Rejections

On April 30, 2019, a customer partnership meeting took place between the USPTO Technology Centers 3600 and 3700 and American Intellectual Property Law Association (AIPLA). The topics for this meeting varied widely (e.g., a training on functional claim drafting and a training on means-plus-function limitations in medical device claims). But for this meeting in these tech centers, the elephant in the room was Section 101, which Paul Kitch covered. Here we provide updated data on how the revised guidance continues to drive record-setting reversals for abstract idea rejections at the Board. We also show that these reversal rates are unevenly distributed throughout the tech centers, especially in tech centers 3600 and 3700.

March 2019 saw the PTAB break another record for total abstract idea rejections reversed. We previously reported that February broke the record with 62 total reversals, but we predicted that this record should not last long. This post turned out to be particularly prescient. In March 2019, the PTAB wholly reversed 77 decisions, exceeding the previous record-holding month by 15.

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Besides the total number of reversals, the PTAB also maintained a high reversal rate. That is, about 33%, or one in three abstract idea rejections were reversed.

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We’re also seeing that Step 1 is becoming the main way in which PTAB panels overturn Examiner abstract idea rejections. In March, 61 decisions relied on Step 1 of the Alice/Mayo framework (Step 2A of the USPTO vernacular) while only 15 relied on Step 2 (Step 2B).

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How does these reversals and reversal rates relate specifically to tech centers 3600 and 3700? With tech center 3600 being the home of many business method art units, one would correctly assume lower reversal rates. Since December 2018 – March 2019, 134 out of 520 decisions were wholly reversed, yielding a reversal rate of 26%. Tech center 3700, home to mechanical and medical device tech, had 23 such reversals out of 47 total, yielding a reversal rate of 50%. The tech centers with the highest rates turned out to be tech center 2100 (27/43 = 63%), home to electrical and computer tech, followed by tech center 2400 (14/26= 54%), home also to electrical and computer tech. 

The abstract idea reversals should continue for several months as applications that have been on appeal wait their turn before the Board. But as applications further upstream (e.g., appeal conference, pre-appeal conference and before the Examiner) are increasingly getting allowed, expect the reversals to return to earth. Especially when Federal Circuit decisions such as Athena v. Mayo (Fed. Cir. Feb. 2019) are pushing back on how valid allowed claims (inspired by USPTO guidance and examples) really are in the real world, .