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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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The USPTO Strikes Back: Interim Guidance Update Promotes Software Patent Eligibility

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In December 2014, the USPTO released its Interim Guidance on Patent Subject Matter Eligibility, which summarized the sprawling case law of 35 USC 101 into examiner instructions. The 2014 Interim Guidance was a cautious document, tracking closely with court opinions, but lacking insight into important questions that the courts had not yet answered. Regarding the critical issue of the types of claims that remain patent-eligible under 35 USC 101, especially for computer-related inventions, this material provided little comfort.

In late July, the USPTO released an update to the Interim Guidance with a remarkably different tone. Undaunted by the unchecked growth of invalidity decisions and very few findings of patent-eligible claims, the July update presents a set of hypothetical claims, characterizes these claims as patent-eligible, and provides an extensive analysis under Alice that supports this finding. Through this bold step, the USPTO fills crucial gaps in 35 USC 101 that the courts have failed and even refused to mend – and although the courts’ conformity with these opinions is by no means guaranteed, the July update adds much-needed balance to the discussion of subject matter eligibility.
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The Software Squeeze: The Treacherous Path for Software Patent Eligibility

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The Alice decision has led to a heap of opinions invalidating patents for computer-related inventions – each holding that the reviewed claims provide (a) an idea that does not involve technology, and (b) an instruction to “apply it” using a generic computer. These decisions rebuke patentees’ failure to limit their claims with the details of a particular technique, and for overbroadly claiming any solution involving a simple concept.

However, a second line of cases, also citing Alice, have invalidated patents for the opposite reason: the claims recite an abundance of technical detail about a specific technique, yet the courts dismiss these details as either “purely conventional,” and/or “mathematical concepts” that are not eligible for patent protection.

These opposing lines of cases, driving against the body of software patents from opposite directions, require the inventors of computer-related inventions to walk a narrow path between qualitative description (claims rejected for overbreadth) and algorithmic description (claims rejected as mathematical or conventional). This path is being steadily narrowed, as the piles of invalid patents on each side continue to mount – threatening a categorical exclusion of computer-related techniques as patent-eligible inventions. This result is astonishing not only in its own right, but in contrast with the Supreme Court’s explicit and consistent rejection of such an exclusion over the 35 years since Diamond v. Diehr.
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The New Practitioner/Examiner Relationship: Collaboration For Valid Patents

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Patent examination and patent prosecution are often regarded as adversarial processes: the practitioner pushes for an allowance with broad patent scope; the examiner pushes out rejections and seeks narrow claims. The process has often been described as a zero-sum struggle over the outcome.

However, today’s patent system is deeply affected by the attention of other parties: competitors and accused infringers; the federal courts, including the Supreme Court; and the public and Congress. Their attention and input require careful consideration of additional factors beyond the outcome, including the enforceability of the patent, the reliability of the patent system, and public perception. These factors have fundamentally altered the relationship between examiners and practitioners: we are not adversaries, but collaborators with the objective of issuing the right patent for each invention.
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First Action Interview Pilot Program: Good Idea, Flawed Process

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Interviews between applicants and examiners can be very productive for moving cases through prosecution. Accordingly, the USPTO has implemented a First Action Interview Pilot Program (“FAIP”), in which applicants and examiners conduct an interview before the first action on the merits. This objective is sound: an open conversation, before the examiner has established a position, can educate the examiner about the invention, and allow the examiner to focus the first search and the first office action on the most important claim elements.

However, as currently implemented, the program exhibits significant disadvantages that diminish the achievable rewards. Indeed, an application that is enrolled in the First Action Interview Pilot Program (FAIP) may incur significant disadvantages over ordinary examination that exceed the benefits of the program.
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USPTO Public Forum on Interim Guidance for Subject-Matter Eligibility

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On Wednesday afternoon, I attended the USPTO’s public forum about the latest Interim Guidance on 101 Subject-Matter Eligibility. This session had the distinction of providing a genuine, open dialogue between the patent bar and the USPTO. Practitioners expressed their praise, criticism, and concerns for the guidance without much padding. USPTO representatives spoke with exceptional candor about the background of the latest draft of the guidance, and their constraints and hopes for future drafts.

On the whole, the session was richly informative about the background of the Interim Guidance; the different perspectives of the USPTO and the patent bar; and the issues that future versions of the guidance may address.
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The Power of the Pen: The Role of Examiners’ Discretion in Patent Examination

The Power of the Pen: The Role of Examiners’ Discretion in Patent Examination published on 6 Comments on The Power of the Pen: The Role of Examiners’ Discretion in Patent Examination

Imagine a federal taxation scheme where your taxes are determined by an IRS agent, who is empowered to use “common sense” in setting your taxes at a “fair” rate. Or a Transportation Security Authority where security guards are allowed to admit or exclude passengers from flights based on whether or not they look “suspicious.” Or a Bureau of Motor Vehicles where your driving rights are issued or withheld based on whether or not the officer thinks you’re a “safe” driver.

Government agencies that allocate legal rights are never based on such discretionary mandates, for a large number of plain and obvious reasons. Yet, recent trends in patent law have elevated examiners’ discretion to dominate the formerly rule-based, evidentiary process – such that the outcome is primarily driven by the personal philosophy and temperament of the patent examiner.

Many practitioners have noted the existence of this trend, and some of its effects. The purpose of this article is to explore the sources of such discretion – the particular opportunities in the examination process that are amenable to arbitrary decisions – and that are routinely exploited to compel the outcome toward the examiner’s desired result.
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Mysteries of Patent Law: The Pointlessness of “Non-Final” vs. “Final” Office Actions

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At a high level, patent examination is a straightforward process: The applicant files a specification and claims. The examiner issues an office action setting forth the basis for rejecting the claims. The applicant responds with amendments and/or arguments, and the examiner issues a next office action, etc. This turn-taking continues until the application is allowed, abandoned, or appealed.

However, delving into the details of the process reveals a surprising amount of administrative complexity, much of which centers on the classification of each office action as “non-final” vs. “final.” While the names suggest a distinction of significant gravity (as in “tentative” vs. “terminal”), the option of overcoming the “finality” of an office action by filing an RCE – and even an unlimited sequence of RCEs for a sequence of “final” office actions – negates any such distinction.

These observations present the basis for today’s Mystery of Patent Law: Why does U.S. patent examination involve unnecessary distinctions between “non-final” and “final” office actions?
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Patent Examination Types, Part III

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This installment of patent examination types is a review of examiners’ negotiation tactics. These tactics are used to compel the examiner’s desired result – irrespective of the technical merit of your application and claims.
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