It is well accepted that the number of section 101 rejections issued during examination dropped significantly after the 2019 Revised Subject Matter Eligibility Guidance was released by the USPTO in January 2019 (see https://www.ipwatchdog.com/2019/08/13/update-101-rejections-uspto-prospects-computer-related-applications-continue-improve-post-guidance/id=112132/). Similarly, it has been noticeably easier to overcome section 101 rejections issued during prosecution as a result of the USPTO’s application of the 2019 Revised Guidance. Although following the 2019 Revised Guidance has resulted in more applicant friendly outcomes under section 101 during examination than in the past, the same does not seem to be the case for ex parte appeals at the Patent Trial and Appeal Board (PTAB). Although the 2019 Revised Guidance makes it clear that the 2019 Revised Guidance applies to all USPTO personnel and has, on its face, been applied by the PTAB, it appears clear from our review of the cases that overcoming a section 101 rejection at the PTAB remains a very difficult proposition. In particular, according to our study of PTAB decisions addressing section 101 from April 23, 2020 to June 12, 2020 only 18% of section 101 rejection were reversed. This number is significantly lower than the 29.2% reversal rate for typical appeals (see USPTO FY20 appeals statistics from Oct. 1, 2019 to Jun. 1, 2020) and is surprising since most of the section 101 rejections being addressed by the PTAB during this period were issued before the 2019 Revised Guidance was issued and presumably should have been deficient in some way under the requirements of the 2019 Revised Guidance.
Although, the PTAB appears to be following the USPTO requirements of applying the 2019 Revised Guidance in ex parte appeals, it appears to be doing so differently from how the guidelines are being applied by the USPTO examining corps.
This article is written by James Love and Summer Associate Karolyn Watson.