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Next Steps for the USPTO’s § 101 Interim Guidance on Patent Eligibility

Next Steps for the USPTO’s § 101 Interim Guidance on Patent Eligibility published on 5 Comments on Next Steps for the USPTO’s § 101 Interim Guidance on Patent Eligibility

The Interim Guidance on Patent Subject Matter Eligibility is the authoritative source of the USPTO’s instructions to patent examiners for applying 35 U.S.C. § 101 to pending applications. This document was originally released in December 2014, and has been supplemented with refinements and updates that reflect changes in the law.

The latest update to the Interim Guidance (released in July 2015) provides insightful examples of patent-eligible subject matter, and the USPTO has solicited public comments about the updated document. Responsive to this solicitation and based upon earlier observations of trends in the application of § 101 by courts and examiners, the following recommendations are presented to promote the stabilization of this turbulent area of patent law.
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Alice Applied: A Report from the Trenches About § 101 at the USPTO

Alice Applied: A Report from the Trenches About § 101 at the USPTO published on 1 Comment on Alice Applied: A Report from the Trenches About § 101 at the USPTO

The Alice decision is now sixteen months old, and its effects still reverberate throughout patent law – both from the top down (courts continue to grapple with the broad legal implications of Alice), and from the bottom up (examiners are tasked with applying Alice to specific applications). The ongoing task of reconciling legal theory and daily examination practice weighs heavily upon the USPTO administration, and specifically the Office of Patent Legal Administration.

Following the July 2015 Update to the Interim Guidance on Patent Subject Matter Eligibility, the USPTO is soliciting public comments about the content. This solicitation presents an opportunity to report upon the “ground truth” of how examiners are applying 35 USC § 101 in daily practice – both as a reflection of the impact of the Interim Guidance and the July Update, and as the basis for recommendations for further adaptation of the Guidance.
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Why Does the PTAB Still Have a Backlog?

Why Does the PTAB Still Have a Backlog? published on 13 Comments on Why Does the PTAB Still Have a Backlog?

Here is a simple question:

Why does the PTAB still have a backlog?

This is not a question about why the PTAB incurred a backlog. The source of the backlog is well-understood: In the mid-2000’s, the USPTO administration urged the examining corps to push down the allowance rate in the interest of “patent quality.” Because applications were rejected based on metrics rather than a proper legal determination, applicants responded by filing appeals, thus overwhelming an unprepared appeal board with a surge of incoming appeals.

However, the USPTO has acted to address some of the problems that prompted the backlog. It has stopped focusing on raw allowance metrics, in favor of per-case legal determinations, and it has expanded the PTAB to work through the backlog. Nevertheless the PTAB still has a massive backlog. Ex parte appeals still require multiple years to resolve. Why does this backlog persist?

(Spoiler alert: This article is not really about the PTAB, but about the examining corps and USPTO administration.)
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