Pressure, Fear of "Errors" Likely Causes of 77% Rate of Section 101 Rejections in USPTO's AI Tech Group
Also: 90% of Voice of IP survey respondents oppose USPTO’s proposal for TDs, 60% say Section 101 is the biggest patent-related issue that policy makers should focus on
Clause 8 Podcast
Last week - Dana-Farber Cancer Institute Chief IP Counsel Steve Caltrider on indispensable role of patents in helping patients:
"The best way to get innovation to patients is through the patent system. And that's the proven method for decades, if not centuries, in terms of how to get any type of innovation to commercialization."
From the archives on why less patents is more:
Steve Caltrider also explained on the podcast why Eli Lilly decided to obtain 80% less patents when he was its General Patent Counsel.
Similarly, IBM’s Chief Patent Counsel for Americas Mark Vallone previously explained why IBM decided to move on from pursuing the goal of “numeric patent leadership” in the last few years.
On next week’s episode: “one of the most notorious patent trolls in America” explains why the criticism doesn’t bother him.
Voice of IP’s Survey Results
Thank you to everyone who participated in Voice of IP’s 1st survey! The unscientific, overwhelmingly depressing results are in:
90% disapprove of the USPTO director’s job performance
100% think the USPTO is on the wrong track
95% think America’s patent system is on the wrong track
90% oppose USPTO’s proposal to raise patent fees
90% oppose USPTO’s proposal for terminal disclaimers
Biggest patent-related issue that policy makers should focus on
60% say Section 101
15% say high invalidation rates at the PTAB
10% say poor examination quality at the USPTO
Fear of “Errors” Likely Cause of Section 101 Rejection Spike
Voice of IP previously broke news regarding the recent spike in Section 101 rejections at the USPTO, including that 77% of AI tech group's OAs include 101 rejections. Readers from across the spectrum of patent views couldn’t quite believe that staggering 77% figure until they saw the above screenshot. Others wondered about the cause.
There did not seem to be any new USPTO guidance or internal training that led to the increase. One possible benign explanation is that the universal interest in AI (after ChatGPT) is leading to lots of subpar patent applications that warrant 101 rejections. That in turn is likely leading examiners in the AI tech group to take the same approach for lots of applications that don't warrant 101 rejections.
However, sources from the USPTO also suggest a more systemic, internal push for examiners to increase Section 101 rejections. Specifically, reminiscent of the post-Alice Section 101 panels, examiners are being told that they need to get approval for allowances if they think there might be potential Section 101 issues. This, in combination with the increased rate of USPTO’s quality review process identifying “errors” for failure to make Section 101 rejections, is leading examiners to err on the siding of making Section 101 rejections.
The threat of “errors” is also leading some supervisory examiners to worry about low review scores for their own art units. To avoid that, these supervisory examiners are pulling more cases for review and encouraging examiners to make more Section 101 rejections.
Eli’s best practice take: how do you overcome a Section 101 rejection that’s being made for no good reason except to avoid an “error”?
For any Section 101 rejection, the best approach is almost always to conduct an interview with an examiner. Usually, the interview is helpful for figuring out how that particular examiner thinks about Section 101 and what it will likely take to overcome it since vastly different arguments and amendments work for different examiners.
There is an extra level of complication when an examiner makes a Section 101 rejection because he is effectively told to do so by someone else. In those instances, it’s important to use the examiner interview to figure that out and identify who is impacting the examiner’s decision to make or withdraw a Section 101 rejection. The practitioner can ask the examiner to consult with that person or group of people to find out what it will take to overcome the Section 101 rejection.
Do you know what the USPTO is working on with regards to Section 101? Do you have any thoughts about one of those Clause 8 episodes listed above?
Please email me at eli@VoiceOfIP.com or find me on Signal at eli.92.