Dec 202011
 

The Board of Patent Appeals and Interferences takes into account a number of authorities when deciding appeals. First at the BPAI’s disposal are the higher courts of the Federal Circuit and Supreme Court. Then there are the rulemaking guidelines issued by the PTO. Then of course there’s the MPEP. I’ve been interested in the whether the Federal Circuit affects the BPAI in terms of the number of rejections the Board issues.

Appeals before the Board are initiated after an examiner rejects a claim at least twice. The applicant, rather than continuing to spend time arguing with the examiner, can elect to appeal to the Board where a panel of three judges will hear both arguments. The Board then has three options. It can reverse the rejection, it can affirm the rejection, or it can introduce a new rejection. Since Bilski v. Kappos has been decided, the Board has used § 101 to reverse 95 times, affirm 166 times, and introduce 65 new rejections. Up until today, the percent of new rejections to how many times the Board has acted is about 20%.

To see whether the Board is affected by Federal Circuit cases, I divided the time frames up into intervals roughly 6 months apart when big Federal Circuit cases were decided. Here are the Federal Circuit cases: Research Corp v. Microsoft, Ass’n for Molecular Pathology v. Myriad, and Ultramercial v. Hulu. At times, there were two Federal Circuit cases decided within a short period of time, which I just combined.

 

A little about the time frames. The first time period is from June 28, 2010 to December 9, 2010, starting with the Supreme Court case Bilski v. Kappos and ending with the first big Federal Circuit decision decided on the merits of § 101. In this time period, the Board introduced new rejections 22.4% of the time, higher than the overall average. This was likely a result of the recent Supreme Court case and the PTO publishing post-Bilski guidelines a month after Bilski. In addition to these factors, two Federal Circuit cases that did not receive that much attention mentioned § 101 subject matter patent-eligibility: Intervet v. Merial Ltd included a dissent with a 101 focus and Astrazeneca v. Apotex was mostly decided on other grounds, but did mention subject matter. Both cases used 101 to poke holes in the patent at issue and the effect may have been felt at the BPAI.

Research Corp v. Microsoft was a subject matter game changer in the sense that it broadened the Bilski analysis by saying that unless the invention was very obviously an abstract idea, the invention should be statutory subject matter. As noted on Ryan Alley’s blog, the case looked as if it would affect the BPAI’s decisions when followed by the BPAI. Prometheus v. Mayo was decided over a week later which was also favorable to patent-eligible subject matter, especially for diagnostic methods. This time period saw new rejections dip to 18.4%.

Next, AMP v. USPTO.  The now-famous gene patenting case is familiar to most. While the take-home message from this Federal Circuit case is that the District Court was wrong in concludingi gene patents are not statutory subject matter, the method claims which were affirmed received far less attention. As noted on the Patents4Life blog post, the method claim analysis was very brief and the arguments not very well developed. Very shortly after AMP, the Federal Circuit decided Cybersource v. Retail Decisions. These two cases seemed to propel the BPAI forward with new rejections, cresting to 24.3%.

Ultramercial v. Hulu was another game changer. Like Research Corp, Ultramercial was another Judge Radar decision which seemed to broaden the 101 analysis from the earlier cases of AMP and Cybersource. This decision until the present has seen a dip in the number of new rejections at the BPAI to 16.7%.

In conclusion, it is interesting to see how the patent tides of change can be felt not only in the higher courts, but at the Board and the effect most likely trickles down to each examiner. I found that differences in rejections in the different time frames were interesting and expected, but not all the time frames were statistically significant at an acceptable confidence level.

All data was mined from the website http://www.bpai101.com/decisions. The word “affirmed” was searched in the outcome field for those decisions that were affirmed. The word “reversed” was searched for reversed decisions and the word “new” was searched for new rejections. Some cases performed multiple operations in one decisions, such as affirming one claim, reversing another or introducing a new rejection. In such cases of multiple operations, I included each operation separately. For instance, one decision could potentially yield a reversal, affirmation, and new rejection. Most decisions, however, had only one operation.

 Posted by at 8:41 am
Dec 152011
 

I haven’t come across a candidate as exciting and as dynamic as Ron Paul in a long time. The man’s focus is liberty and a more careful following of the constitution. I find him a very intelligent speaker and the consistency of his positions is remarkable. Here is an interesting interview about Anti-Trust and Monopoly with economics professor Dominick Armentano from 1983.

Dec 092011
 

I have been interested in § 101 cases for a number of reasons. First, as I’ve taken on clients, inevitably questions come up that relate back to § 101. I like to look at the Board of Patent Appeals and Interferences (BPAI) decisions because of the sheer volume of cases. From a practical perspective, studying decisions that involve subject matter patent-eligibility is a great way to improve your claim and specification drafting skills because you can learn from applicants’ brilliant or not-so-brilliant moments.

I have also been interested in BPAI § 101 out of sheer academic curiosity. In law school, I spent a considerable amount of time researching claim drafting for my law review note. I found that § 101 is increasingly becoming a volatile area of law, which is bad for predictability. Indeed, section 101 has recently been called the substantive due process clause of patent law and I’ve kind of wanted to figure it out. Like higher courts, I find it interesting when there appears to be contradictory holdings, that some decisions perhaps might have gone the other way if a different panel of judges had been assigned the case.

Section 101 has been in flux for awhile now, arguably since the Benson, Flook, Diehr cases starting in the 1970s. This flux has been highlighted within the last few years, with the Supreme Court “solidifying” § 101 law in Bilski v. Kappos. But since then, the lower courts including the BPAI have struggled to consistently apply precedent.

I have created a website devoted to making sense of § 101 patent-eligibility since Bilski v. Kappos by looking at the BPAI’s decisions that have been decided on the merits of subject matter patent-eligibility. The website is called BPAI101.com. It’s meant for both the practitioner who would like to keep up on current cases at the BPAI and also the academic who is interested in trends at the BPAI.

I decided to create this website because there is no site like it anywhere. The closest site is the BPAI’s ReadingRoom, but in trying to mine the BPAI’s decisions for interesting and relevant information, the website struggles for a number of reasons. Part of the reason for its struggles lies in the 1990s-style BPAI website itself. Each decision is only available by viewing its PDF file. Who wants to deal with a bunch of PDFs? Also, there is only one full-text search field, meaning that you have to search very broadly. If you are interested in a particular art unit and don’t want to sift through other numbers that happen to also appear in the entire document, you are out of luck. Next, only the precedential decisions have been OCR’d, meaning that content on the front page of each decision that are non-precedential will not show up. I don’t mean to diminish the BPAI’s site, but the website administrator simply told me that they don’t have the resources to add additional functionality.

BPAI101.com is designed to overcome many of these shortcomings. The site already starts with only those decisions that have been decided on the merits of subject matter 101. By going to the decisions page, you can view in tabular format a listing of all the decisions, which you can sort by clicking on the relevant column. You can also refine the results on a wide variety of filters. For instance, if you are interested in a particular time frame of decisions, you can select before, after, or in between values. You can also export these results into either CSV, Word, Excel, or XML format.

Another interesting feature of BPAI101.com is its unique use of tags. Each decision is made up of multiple tags that allow for more interesting information about it to be analyzed. For instance, in every decision, certain cases or guidelines can be used to support the decision. Each of these make up a “Support” tag. By looking at the tags, you can see which cases the Board uses to either affirm or reverse a particular rejection. Similarly, the Arguments tags lets you see how the Board articulates its reasoning for affirming or reversing a rejection. Examples of this include “Abstract idea” or “Mental steps” or “Fails the machine or transformation test.” Other tags include art unit, examiner, correspondent (applicant), authoring judge, and participating judge. At the very least, these tags will give you interesting conversation starters for the upcoming holidays: “So, did you know that Hubert C. Lorin and Jean R. Homere have each authored the most BPAI decisions on 101 subject matter?” “Hey, I don’t know if you knew this, but art unit 2166 has the most activity with regards to subject matter 101 appeals.” “Have you heard that Wilbert L. Starks is the examiner who has been appealed the most with regards to § 101?” The possibilities for interesting conversation are really endless.

BPAI101.com also allows for you to get connected to these decisions in the format that’s best for you. Equipped with an RSS feed to subscribe to, BPAI101 also has a Twitter account, Facebook page, Google+ page, and LinkedIn Group. With the help of BPAI101.com, you will hear about new 101 BPAI decisions before most people.

 Posted by at 8:05 am