The Latin maxim Stare decisis et non quieta movere means “to stand by decisions and not disturb the undisturbed.” In the courts, vertical stare decisis indicates that inferior courts are bound by decisions of superior courts, and horizontal stare decisis indicates that a judge of a given court is bound by prior decision of the same court.
So let’s turn to the USPTO. One may think that the structure of the agency would lend itself to abide by the same stare decisis principles. At the end of fiscal year 2014, the USPTO included 9,302 patent examiners who serve a judge-like function of administratively determining whether an application is to issue as a patent. An applicant may further initiate an appeal of an examiner decision (a rejection or patent issuance). The appeal would be decided upon by a collection of administrative law judges at the Patent Trial and Appeal Board (PTAB), which includes 231 Judge members as of April 2015. One may think that PTAB decisions would therefore bind judges of the same Board and examiners. This is seldom the case.
PTAB decisions are predominately given one of three classifications: precedential, informative or routine. Only precedential decisions are to serve as binding authority. Informative decisions may serve as an authority but are not binding. Routine decisions may be cited as relevant but are not to be cited as an authority. Recent research indicates that, of the 20,631 ex parte appeal decisions issued in fiscal years 2013 or 2014, less than 0.04% (more specifically, 7 of the 20,631) were precedential or informative. FIG. 1 shows a representation of this data.
Thus, while examiners and applicants alike are desperate for guidance and interpretation of the vague and case-specific case law, PTAB is failing to step up. For example, the state of interpretation under 35 U.S.C. 101 as to what subject matter is eligible for patent protection is nothing short of a mess with many examiners echoing applicant frustration. Since July 2012, the USPTO has issued four different sets of guidelines directed to the statute, and their naming of the most recent guidelines as being “interim” guidelines suggest that another set of guidelines may be forthcoming.
Applicants have begged for more tangible examples of what, for example, constitutes “significantly more” to allow claims directed to an abstract idea or law of nature to nonetheless be patent eligible. The USPTO has struggled to respond to these requests in a timely manner and has been monitoring all court decisions and any precedential or informative PTAB decisions for guidance. Potentially, the PTAB is best positioned to provide some clarity on the issue due to the higher likelihood that borderline cases will be in queue for appeal. Court cases that deal with extreme patents that are clearly ineligible offer little information for applicants and examiners as to what is sufficient for 101 compliance. However, only one (of the mere seven) of the precedential or informative ex parte appeal PTAB decisions from fiscal years 2013-2014 dealt with the issue of patent eligibility.
We have recently encouraged stakeholders to actively participate in the precedential-designation process by nominating particular decisions that could provide guidance to the PTAB and Examining corps. See The Patent Bar’s Role in Setting PTAB Precedence. Further, we ask PTAB Judges to review these nominations with eye towards finding decisions to be made precedential rather than too critically reviewing individual decisions. Further, we request that PTAB Judges – who are reviewing and composing decisions as part of their jobs – submit their own nominations. Such designations would promote clarity, consistency and efficiency and may further reduce the PTAB workload by providing guidance so as to discourage common examination or prosecution errors. Any judicial system is premised on the bedrock concept of stare decisis to reduce the cost of deciding similar factual situations repeatedly. The PTAB has, to date, very rarely designated rulings as Precedential or Informative to make future decisions easier so we ask that an emphasis be made on production of new precedence.
 Smith, J. D., Boalick, S.R. “Patent Trial and Appeal Board Update.” Patent Public Advisory Committee Quarterly Meeting, May 14, 2015.
 Patent Trial and Appeal Board. Standard Operating Procedure 2 (Revision 8).
 Gaudry, K.S., Krieger, J. The Patent Bar’s Role in Setting PTAB Precedence. Law360, September 10, 2015.