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 actu ..read more

Applicants typically rely on outside counsel who use their expertise to navigate the response strategy. And for good reason. These outside counsel have developed years of experience in advancing client goals while complying with the numerous patent laws and rules. Here, however, we write about an ex parte appeal where the Board agreed with a pro se applicant in overturning the Section 101 rejection. The decision Ex parte Yemmela Appeal No. 2018-005814 (Oct. 25, 2019). The art unit, 2659, handles technology related to Linguistics, Speech Processing and Audio Compression. Before getting to the ..read more

If you’re at the 2019 AIPLA Annual Meeting in DC, please stop by our booth. We would love to talk to you about your interests in patent data and how we might work together or help your needs. We’d also love to show you our new module “Office Action Answers”. @aipla #aiplaam2019 #annualmeeting ..read more

Artificial intelligence technology has been around for a long time, but has recently made advances prompting recognition as the transformative force that it truly is. While applicants have successfully patented artificial intelligence inventions for many years, the US has been more favorable than Europe for some types of AI. Here we focus on one area of difference between patent-eligibility of NLP inventions in the USPTO versus the EPO. We use board decisions for distinguishing the two jurisdictions.  As some background, machine learning is the AI technique most frequently disclosed in patents ..read more

We have been analyzing ex parte decisions at the PTAB for many years now. So for every day, we can see the decisions that have been imported from the USPTO. This came in handy a few months ago when USPTO personnel told us that they completed a migration of all ex parte PTAB decisions to a modernized webpage. While we were excited for this new functionality (including a RESTful API), we started noticing abnormalities in the data. For example, July 2019 (the month when the transition to the new page took place) only had 150 decisions. That was a much lower number of appeal decisions than we were ..read more

Over the past few years, the USPTO has modernized its data offerings with new websites and APIs. Just recently, the USPTO confirmed completion of a new PTAB site with successfully migrated appeal decisions. Anticipat has now fully transitioned to using this new data source.  Over the years, many practitioners have become familiar with the old ptab efoia webpage. Its 1990s-style interface and functionality made an indelible impression. In fact, we previously discussed seven key shortcomings of the PTO webpage. But now its life is all but gone. Several weeks ago, we noticed that new decisions we ..read more

A distinguishing feature of a good patent practitioner is his or her ability to analogize or distinguish. But the usefulness of such analogizing/distinguishing is not limited to patent prosecutors. In fact, patent litigators are increasingly using ex parte appeals data in court with the same approach.  First some context. Patent practitioners have long used a technique of analogizing to rules and case law to bolster their position. For example, a patent lawyer can use the universe of MPEP, case law or other USPTO guidance to point out that an examiner’s rejection is improper. A problem with th ..read more

A recent blog post by IPWatchdog recapped specific consensus views at the Patent Masters Symposium where Congress can help fix the messy state of patent-eligibility at the USPTO. Getting Congress involved seems like the best way to stabilize and make patent-eligibility more predictable. But if patent reform loses steam on Capitol Hill, it working with the current law is critical. Recent developments at the PTAB show most effective arguments (Step 2A or Step 1 of Alice/Mayo) to argue against patent-ineligibility.  Last week, we published updated data of appeal outcomes for abstract idea rejecti ..read more

Sometimes it makes sense to appeal an application more than one time. Perhaps the Examiner isn’t complying with the direction from the first Board decision. Maybe an invention is so valuable that you’d rather avoid overlimiting the claims with lots of prosecution history estoppel and claim amendments and instead try getting broader claim scope through the appeal process the second time. Or maybe the application is in such a desperate state that another appeal is the only good option left. Regardless of the motivation for appealing twice, a good practice tip shown in a recent ex parte decision ..read more

April showed a continued high number (204) of abstract idea decisions decided at the Board. Of the 204 total decisions deciding abstract idea rejections for this month, the Board completely reversed the rejection 54 times. This shows a reversal rate of 26.5%, which is lower than the last several months, but higher than many previous months. In addition to the reversal rate, the volume of this type of rejection being decided continues to be high—higher than last year, with the number of reversals significantly higher. In a prior blog post, we correctly predicted that the reversal rates for th ..read more