Still No Path Out of the 101 Swamp?

Much ink has been spilled in recent times on the standards for, and outcomes of, patent eligibility questions under § 101. Consider, for example, USPTO Director Andrei Iancu’s remarks in September about providing additional guidance to Patent Office examiners, and various analyses of invalidation rates in the federal courts. (We touched on invalidation rates ourselves in our Bilski Blog update in August, at which time the Federal Circuit’s cumulative invalidation rate since July 2014 was hovering north of 88 percent.)

One topic has received little attention, however: The rulings of the Patent Trial and Appeal Board on pre-grant § 101 examiner rejections appealed by applicants. In my opinion, this constitutes the proverbial elephant in the room for patent prosecutors.

The term “art allowance”—referring to situations where the examiner’s prior art rejections have all been overcome, and only § 101 rejections remain—has recently become an often-used part of patent prosecutor vocabulary, as examiners are increasingly agreeing to drop their art rejections, while still remaining unbudging on § 101.

PTAB’s Track Record on § 101 Rejections
In my own experience, the PTAB has been a highly effective route for obtaining reversals of faulty art rejections by patent examiners. As PTAB appeal decisions on § 101 rejections have finally started to arrive in greater numbers, however, many of us have concluded that the PTAB is a decidedly less favorable forum for reversing § 101 rejections.

The Bilski Blog conducted a survey of 96 of the most recent PTAB appeal rulings on § 101 rejections, and the results confirmed my intuition: The PTAB upheld the examiners’ rejections 92% of the time, which makes the PTAB even more likely than the Federal Circuit to uphold § 101 rejections.

The Patent Applicant’s Dilemma
Patent applicants are thus in a quandary when dealing with an examiner who is committed to a § 101 rejection, as is often the case for patent applications assigned to the 36XX art units, or to more junior examiners who lack the authority and/or confidence to find claims patent-eligible. Namely, the examiner is unwilling to be convinced; appeal to the PTAB is likely to be fruitless; and appeals to the federal courts are not economical. Facing this dilemma, applicants often have only two practical options: (1) Throw up their hands and let the patent application go abandoned, or (2) appeal or otherwise buy time while waiting for the law to be clarified. Neither option is ideal, to say the least, though for now the latter option appears to be the best bet.

No Quick Fix
Perseverance—or patience—often does pay off. As the law continues to evolve, we’ve seen new pro-eligibility decisions whose reasoning is applicable to many technology areas, and new Patent Office guidelines that make it more difficult for examiners to maintain flimsy rejections.

Although patent prosecutors would obviously like to see quicker allowances, unless Congress decides to step in we need to remain creative in understanding what routes lead most efficiently to successful resolution of § 101 issues.

Originally published December 10, 2018 on Fenwick's Bilski Blog.