by Kurt Buechle and Liz Burke
On April 23, 2020, the United States Patent and Trademark Office (USPTO) issued a press release announcing the publication of a new report on patent examination outcomes after the U.S. Supreme Court’s June 2014 decision in Alice Corp. v. CLS Bank and the USPTO’s subsequently released January 2019 Subject Matter Eligibility Guidance (“Guidance”) addressing that decision. The USPTO has made the report available on its website along with an “infographic” highlighting the trend in first action examination uncertainty with respect to subject matter eligibility. These items can be accessed here.
The USPTO report, Adjusting to Alice: USPTO Patent Examination Outcomes After Alice Corp. v. CLS Bank International (“Report”), published April 23, 2020 and authored by the USPTO’s Chief Economist, asserts that actions taken by the USPTO have brought greater predictability and certainty in determining subject matter eligibility in those technology areas most affected by Alice, which it terms “Alice-affected technologies.” In reviewing the statistics for patent examination post-Alice, the Report makes four key findings. First, the likelihood of applications in Alice-affected technology areas receiving a subject matter eligibility rejection under 35 U.S.C. § 101 increased by 31% in the 18-month period after Alice was decided. Second, patent examination uncertainty – the variability of subject matter eligibility determinations by patent examiners in first office actions – increased by 26% for these technology areas during the same 18-month period. Third, one year after the USPTO issued its Guidance, the likelihood of applications directed to such technologies receiving a first Office Action including a subject matter ineligibility rejection decreased by 25%. Finally, the Report concludes that during this same one year period, patent examination uncertainty for Alice-affected technologies decreased by 44%.
While the Report does not include a list or examples of Alice-affected technologies, it does include an Appendix which describes the methodology used to identify such technologies. A description of that methodology is expanded on in Supplemental Materials to the Report, which refers to the use of the U.S. Patent Classification (USPC) system to define 33 USPC classes as being Alice-affected technologies. The Report does acknowledge that the USPTO no longer uses the USPC for classification purposes. See Report, p. 8, fn 19. The full report is available here.
