Our analysis of recent data, however, may indicate that the steep drop off in patent issuances due to Alice has at least hit its floor and started an upward trend. § 101 (“101 Rejection”), the statute under which all Alice rejections are made.We examined the data for patents in various art units of tech center 3600 that 1) issued between January 1, 2013 and May 6, 2016 and 2) had overcome a rejection under 35 U. The selected date range enabled us to compare the examination of issued patents during several distinct time periods: 1) before the June 19, 2014 Alice decision; 2) between the Alice decision and the 2014 Guidelines; 3) between the 2014 Guidelines and the 2015 Guidelines; and 4) between the 2015 Guidelines and 2016 Guidelines.Not surprisingly, our analysis of the patents issued since the Alice decision reveals a marked increase in the occurrence of 101 Rejections in the selected art units.These results are shown in Graph 1 below, which illustrates the percentage of issued patents in the selected art units that received a 101 Rejection during examination.Thus, the USPTO’s Step 2a asks whether the claim is directed to a judicial exception (e.g., a natural product), while its Step 2b asks “whether any element, or combination of elements, …is sufficient to ensure that the claim amounts to significantly more than the judicial exception.” The USPTO’s “markedly different” test is used in Step 2a, to determine whether a claim that recites a nature-based product really is “directed to” a natural product such that it needs to be subjected to a “significantly more” analysis.
Although there has been both a sharp increase in patent eligibility rejections and a sharp decrease in issued patents for software and business method-related inventions since Alice, patent applicants are still having some success in obtaining patents in these technology areas.
Does that mean that any structural difference will suffice but functional differences only support eligibility if they are “relevant” to the invention? 2347 (2014) (“Alice”) has had a significant impact on the patent eligibility of software-implemented inventions under 35 U. Following this decision, the United States Patent and Trademark Office (“USPTO”) issued multiple guidelines to aid Examiners in their review of patent applications under Alice.
Creams Versus Microneedles How can a peptide formulated in a cream be patent-eligible with no further inquiry, while a peptide coated on a microneedle array only is patent-eligible if it was not conventional to do so? The first guidelines published on December 16, 2014 (“2014 Guidelines”), followed by an update that published on July 30, 2015 (“2015 Guidelines”).
The significant drop in patents issued per month (or PPM) after Alice is not surprising; however, the noticeable uptick following the 2015 Guidelines is noteworthy.
While the post-2015 Guidelines PPM rate is still well below 50% of the pre-Alice levels, the rate has increased by nearly 25% compared to the 2014 Guidelines-2015 Guidelines time period.