The AFCP 2.0 program was established in 2012 to provide applicants with an alternative to RCEs. The purpose of the program is threefold: 

As precursors to the more wide-ranging Alice decision and the USPTO guidance that came after it, the impacts of the Mayo and Myriad decisions have gotten somewhat lost in the scuffle of all of the attention paid to § 101 rejections in the software and business methods technology sectors. While Mayo and Myriad were limited to patent applications touching on laws of nature, these two cases established the framework that the Supreme Court and the USPTO examiner corps would eventually apply to all applications touching on any type of judicial exception. Just like Alice in the software and business methods tech sector, Mayo/Myriad rejections have also made patent prosecution for biotech, pharma, and life science applications much more difficult. 

Ever since Mayo was decided in 2012, the percentage of § 101 rejections on biotech, pharma, and life sciences applications has been on the rise, from 4.9% before Mayo to 8.6% after Myriad to 15.7% after Alice. A total of about 37% of all § 101 rejections in Technology Center 1600, which handles the bulk of these types of applications, now cite either Mayo or Myriad. This is bad news for applicants, since only 45.2% of applications with either a Mayo or Myriad rejection ever receive an allowance. However, there are a few firms out there who manage to do remarkably well with Mayo/Myriad rejections despite their generally negative effects on allowance rates. 

On August 10, 2017, we presented a webinar titled "Biotech, Pharma, & Life Sciences at the USPTO" where we examined the state of patent prosecution in Technology Center 1600. If you have not seen that presentation, you can view it below. 

In addition to being more expensive than RCEs and interviews, appeals also take much, much longer to reach a resolution. It takes an average of 33 months for an appeal at the USPTO to make it from the notice of appeal stage to a final PTAB decision on the merits. That is a significant amount of time (almost three years, in fact), for an application’s outcome to be up in the air. This perhaps explains at least one of the reasons why appeals are the least common way to respond to a final rejection. 

As we have previously reported, Michelle Lee recently stepped down from her post as Under Secretary of Commerce for Intellectual Property and Director of the USPTO. This move was abrupt and took most in the IP world by surprise. As such, her resignation has raised many questions about the future of the USPTO and about American IP policy more generally. In this post, we will examine Michelle Lee’s rise to the top of the USPTO, her tenure there, and a few possible candidates who might be in line to replace her.

Overview 

Few decisions in the patent law space in the last decade have made as many waves as Alice Corporation Pty. Ltd. V. CLS Bank International, et al., 573 U.S. ___ (2014). Decided on June 19, 2014, the case was a landmark decision that significantly altered the way the courts and the United States Patent and Trademark Office (USPTO) handle software patents. In the days and weeks after the decision was handed down, many claimed that the decision would be the death of software patents and would deal a serious blow to the tech industry at large. While many of these initial claims proved to be hyperbolic, the Alice case has indeed made it much more difficult to obtain a patent on applications with claims that are implemented on a general-purpose computer (i.e., software and business methods patents).

At the date of publication, it has been slightly over three years since the case was decided, and enough time has now passed for us to truly understand the full scope of the decision’s effects on the USPTO. In this publication, we will review the Court’s reasoning in the Alice decision, summarize our initial findings from our May 2016 study of the case, explain how lower courts have interpreted the case since its decision, and update our initial findings with new data that examines the case’s effects on applications filed in the post-Alice era. All information herein was assembled using raw data provided by the USPTO and analyzed using Juristat’s proprietary algorithms.

As we mark the three-year anniversary of the Alice decision, the case’s effects have come into focus quite clearly. About 64% of all § 101 rejections now cite Alice, and that percentage has only been on an upward trend since the case was decided. Applicants who receive a § 101 rejection have about a 61% chance of getting around it, but that chance drops to about 50% if the § 101 rejection cites Alice. Overall, only 55% of applicants who receive an Alice rejection on a particular application will ever receive an allowance on the same application, giving the average applicant about a 50/50 chance of success or failure.

To speed up patent prosecution and minimize unnecessary Requests for Continued Examination (RCEs), the USPTO enacted the After Final Consideration Pilot (AFCP) 2.0 program as an alternative response to a final rejection. The plan was to increase communication between examiners and applicants and take those applications that are close to allowance across the finish line, without requiring the time and cost inevitably associated with an RCE. 

One of the most commonly-cited disadvantages to choosing an appeal as a post-final rejection strategy is that, in addition to being expensive, they are also quite slow. For applications in which there was a final PTAB decision on the merits from January 1, 2011 to December 31, 2015, the average length of time between the filing of a notice of appeal and a PTAB decision was 33.4 months. Compare this to an average of 6.7 months for applications where the applicant’s appeal was either intervened or resolved by a pre-appeal brief conference. Even though any appeal that makes it all the way to a PTAB decision is going to take longer than most other applications, there are several firms that manage to beat the USPTO average.