Posts Tagged: "Art Units"

On Thursday, July 30, U.S. Patent and Trademark Office (USPTO) Commissioner for Patents Drew Hirshfeld and other USPTO staff updated attendees of IPWatchdog and LexisNexis’ webinar, “A Conversation with the Commissioner: A Look Inside Patent Processes at the USPTO,” on issues such as staffing, reopening plans, and upcoming new processes for routing patent applications.

I’ve recently hosted two webinars on patent classification, taking a look at how contractors for the U.S. Patent and Trademark Office (USPTO) determine where to route each patent application within the Office after filing. One webinar dealt with classification generally and a second dealt specifically with classification relating to computer implemented inventions. These webinars were fascinating on many levels. Did you know that the old patent classification system plays an important role in determining which Art Unit is assigned an application? And you probably thought you could forget about class 705! Not so fast! A sparsely populated technical disclosure in the specification with an inartful claim set is still a recipe for characterization in class 705, which still must be avoided at all costs if possible.

Artificial Intelligence (AI) patents have made a strong comeback under the new 2019 Revised Patent Subject Matter Eligibility Guidance. As the first graph above shows, allowances per office action have gone from an average of 15% before the guidance to 38% after the guidance. The increase occurred almost immediately after examiners were trained on the new guidance in January. For AI inventors concerned about the impact of the old Alice guidelines on the examination of AI-related applications, it looks like more hopeful times are ahead. The situation is grimmer for finance patents. The new guidance has not had any significant effect on allowances per office action. I reviewed a number of recent office actions under the new guidelines to see where the problem might be. It appears that most examiners in the finance art units 3691 to 3697 consider any improvement to a computer implemented financial process to be nothing more than an abstract idea. It doesn’t matter how novel or sophisticated the algorithms might be. The Patent Trial and Appeal Board has been backing up this examiner perspective, with the affirmance rate for related appeals being more than 90%.

Bioinformatics is a growing interdisciplinary technological field in which computing and software resources are applied to biological data and solve biological problems. For example, bioinformatics can be used to predict protein sequences through analysis of large databases of biological data to enable the development of new drug therapies. Advances in computing and software, like artificial intelligence (AI), open increasing possibilities in bioinformatics. Bioinformatics is growing rapidly—the market is predicted to exceed $16 billion by 2022. As with most growing industries, mechanisms that protect and promote innovations are key to supporting that growth. Thus, it is no surprise that the number of patent applications filed and assigned to the designated bioinformatics art unit was 40% higher in 2017 than it was in 2010. Despite this significant increase in applications, for the last five years, the subject-matter-eligibility requirement (codified as 35 U.S.C. § 101) of the U.S. patent law has been particularly vexing to applicants of computer-related inventions like bioinformatics.

Art Unit 1618 and 1621 are both identified as relating to “organic compounds – part of the class 532-570 series.” However, the patenting probability for cancer related applications is markedly different between these two art units. 70.5% of the cancer patent applications assigned to Art Unit 1621 were patented, while only 42.3% assigned to Art Unit 1618 were patented. Indeed, nearly one-quarter of all cancer applications are assigned to art units with low allowance rates, while 16% were assigned to art units with much higher allowance rates… The cancer-application allowance rates range from 20.5% to 100.0% in various art units (with the general allowance rate of these art units ranging from 25.7% to 97.8%). Thus, the probability of securing patent protection on a cancer-related innovation exhibits marked variability and appears to be highly dependent on art-unit assignment.

In the years after the Alice decision, it had seemed as though examiners in the business method art units felt as though their hands were tied with respect to issuing applications. Even if they had recommended an application for allowance, it was often sent back by quality review with an indication that a patent-eligibility rejection should be made or maintained. However, in early 2017 – at least with respect to a handful of applications – examiners’ perspectives seem to have changed, where they were more willing to work with the applicants to find eligible claim material and/or suitable arguments to be put on the record that would suffice for an allowance… While we note that the business method allowance prospects still remain substantially below those in other Technology Centers, the beyond-doubling of this statistic is of practical significance.

So an applicant waits years on appeal to get relief from frivolous rejections, achieves a complete and total victory, and their reward is another bogus rejection from the same examiner who has been harassing them for years. It is no wonder many applicants just give up. If this were happening anywhere else in the world we would ridicule the system as fixed or rigged… How ironic, and sad, is it that the PTAB has the authority to invalidate issued patents in post grant proceedings but has no implementing authority with respect to its decisions completely reversing even frivolous examiner rejections. This is yet another reason the PTAB is appropriately characterized a death squad. The only power the PTAB seems to have is to take rights away from property owners (i.e., patent owners).

What is happening in TC 3600 is prosecution is being re-opened for the purpose of issuing Alice rejections. With the help of readers, so far I’ve found eleven (11) separate cases over the last 10 months where prosecution was re-opened by Greg Vidovich, Director of TC 3600, after the Board issued a decision completely reversing the examiner on every rejection of every claim. In each case the Vidovich authorized re-opening of prosecution simply to issue Alice rejections… What good is an appeal when the TC Director has demonstrated that even if the appeal is successful prosecution can be re-opened and more bogus rejections made? What good is going back into prosecution with the same unreasonable examiner that has just has each and every rejection of each and every claim reversed? There is no relief for applicants, which is not how the system is supposed to work.

The disparity between the art units is confused even more so when we consider the total number of Alice rejections in each art unit, rather than just counting the total number of applications receiving an Alice rejection. Doing that, we can see that, while 3622 and 3623 have almost equal numbers of applications with Alice rejections, 3623 actually has more in total. This means that applications in that art unit are more likely to receive multiple Alice rejections and take longer to prosecute.

Business method patents are still being granted after Alice, but are being granted at lower rates than before, and some assignees are better at obtaining them than others. The top assignees in the business methods art units have a wide range of allowance rates, from Oracle at 83.3% to Siemens at 35.3%, resulting in a difference of 48 percentage points. Even among the most successful assignees, only three have allowance rates of over 50%.