Update on Section 101 Abstract Idea Reversal Rates at the PTAB

We previously reported on the relative high number of reversals for abstract idea rejections. While still respectable, some months reached into the 30%s of rejections being reversed. This was jump from previous months (where the reversal rate hovered around 15%) likely stemmed from new USPTO leadership and new guidelines. Now it looks like the Board has fallen back. 

In October, there were 193 abstract idea rejections decided at the PTAB. Of these, 34 were reversed, meaning that the reversal rate was only 17.6%. A few things might explain this. 

It is likely that the applications that are actually making their way to the Board have already been filtered based on the updated guidance. So the applications that were weaker may have had prosecution reopened or allowances rather than getting sent to the Board. To confirm, we should have functionality on Anticipat as we just added bulk PEDs data to our database. Stay tuned. 

Another reason is that while Congress appears to be getting more serious about fixing Section 101, recent case law hasn’t made it as friendly for applicants. Early last month, a split Federal Circuit panel held that a method of manufacturing claim was invalid as a patent-ineligible law of nature. American Axle & Manufacturing, Inc. v. Neapco Holdings LLC (Fed. Cir. 2019). Many patent practitioners provided real-time responses for the majority opinion. Dennis Crouch wrote an interesting blog post “Hey Mechanical Engineers: Your Patents are Also Ineligible”, focusing on the new Federal Circuit case. It was a clever title that underscored an important effect of this decision.

While the opinion’s analysis is not unprecedented, it is rare. This decision is likely to continue to have an effect on strengthening the two-step analysis of Section 101 and increasing the frequency of Examiners rejecting claims across all technology classes. 

The one true thing about Section 101 is that it is a pendulum that oscillates back and forth depending on Federal Circuit panels and USPTO directives. The challenge for patent practitioners is to anticipate which way the pendulum is moving and act quickly with that knowledge.