is a partner and registered patent attorney in Patterson + Sheridan LLP’s San Diego, CA office. Nick’s practice involves counseling clients on preparation and prosecution of patent applications, technology licensing, and adversarial matters in a wide range of technology areas, including: artificial intelligence, machine learning, computer software and hardware, additive manufacturing, telecommunications, automotive technologies, and others.
The year 2019 was supposed to be when subject matter eligibility examination at the USPTO got better. First, the USPTO published Revised Patent Subject Matter Eligibility Guidance in January 2019 meant to address “how to apply the U.S. Supreme Court’s [Alice] framework for evaluating eligibility [under Section 101].” 84 Fed. Reg. 50 (Jan. 7, 2019) (“PEG”). Then, the USPTO doubled down with the October 2019 Subject Matter Eligibility update (“October Update”). In contemporary parlance, you might say that 2019 was supposed to be the year that the USPTO flattened the Section 101 rejection curve. There is promising evidence that the 2019 Guidance has reduced Section 101 rejections during prosecution before USPTO examiners. See Update on 101 Rejections at the USPTO: Prospects for Computer-Related Applications Continue to Improve Post-Guidance. Unfortunately, the Patent Trial and Appeal Board (PTAB) does not seem to have received the memo. While the PTAB routinely refers to the 2019 Guidance in decisions on Section 101 rejections, there is at least one critical requirement of the 2019 Guidance that the PTAB appears to ignore—the requirement that an examiner must show every claim, individually, is ineligible.