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Posts Tagged: "class 705"

Is there a Tide-Change in the Prospects of Patenting Business Method Innovations?

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.

PTAB Gone Rogue on Covered Business Methods

In CBM2015-00161, the Patent Trial and Appeal Board (PTAB) at the United States Patent & Trademark Office (USPTO) recently instituted a Covered Business Method (CBM) review on a non-business method patent with a clear and unambiguous technological aspect. This institution decision is in direct contravention of the statute, which is by its express terms prevents CBM review from anything with a technical aspect. In short, only covered business methods, which are financial related business method patents without a technological aspect, are supposed to be subject to this special form of post grant review. Even more troubling, the patent in question has been found to be directed to technological improvements by both the European Patent Office and the United States Federal District Court for the Northern District of Illinois. Nevertheless, the PTAB still instituted a CBM.

Making it Easier to Get a Patent

Contrary to popular belief, things are getting much better in business methods. Applications filed in 1999 had prosecution times of over 10 years (lower green arrow). These and subsequent applications jammed up the system leading to excessive delays to first office actions. Applications filed in 2004, for example, had delays to first office action of 6 years (middle red arrow). Sometime around 2010, however, things started to improve. A lot more patents started issuing and the delays to first office action dropped to around 2 years (upper red arrow). That’s not to say that it’s easy to get a patent in business methods, but at least examiners and applicants are making much better progress in reaching agreement on allowable claims in a reasonable amount of time.

Examining the Appealed Patent Allowances from Art Unit 3689

The data clearly suggests that that inquiry should be made into what is going on in Art Unit 3689. If there is nothing odd after evaluation then I will be the first to report that and say that after further evaluation the patent examiners in Art Unit 3689 are doing a fantastic job. In the meantime, however, one way that we can get a more complete glimpse of what is going on in Art Unit 3689 is to take a look at the patents granted only after a decision from the Board of Patent Appeals and Interferences. Currently, according to the data available in the PatentCore system, 13 of the 24 patents granted have been granted after a decision from the BPAI, and 3 others were granted only after the applicant filed an appeal brief. That rate seems extraordinarily high to me, as does the 76.5% reversal rate at the BPAI. A look at some of the appeals themselves is elucidating.

Business Methods by the Numbers: A Look Inside PTO Class 705

What these numbers tell you is if your application is in Art Unit 3622 or 3689 you are in for a long wait to obtain a patent. The numbers also show that if you carry the case all the way through appeal there is quite a high success rate for applicants; 66.7% when in Art Unit 3622 and 71.4% when in Art Unit 3689. It is hard to know for sure what is going on in Art Units 3622 and 3689, but one number jumps out at me as particularly alarming. In Art Unit 3689 nearly 4 out of 5 of the applications they allow require the applicant to hop on the appeal track.