Since June of 2014, Alice has become one of the most feared names in patent prosecution. Rejections citing Alice have multiplied exponentially since then, and they now account for more than 60% of §101 rejections and more than 8% of all rejections, as of our latest analysis. 

But Alice rejections aren’t necessarily fatal to an application – and we found the firms to prove it. Which firms are the best at overcoming Alice rejections and getting to an NOA? Read on to find out.

As more and more of our daily life becomes automated, analyzed, and interconnected, people look forward to the Consumer Electronics Show (CES) every year to learn about emerging tech and its potential application to everyday life.

The 2018-2019 government shutdown will stand – at least for now – as the longest closure or partial closure of the U.S. federal government in modern history. While the USPTO is not immune from the dangers of a shutdown, it has a unique structure that helps it weather the storm. So well, in fact, that the USPTO has never closed due to a lack of federal appropriations.

The four years since Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014) have seen thousands of patents invalidated based on its holdings. In an update to our Alice: Three Years On review of the patent landscape, we look to see where Alice has had the greatest impact within the USPTO.

 

An Overview of Patent Prosecution Trends at the USPTO Since the Year 2000

 

Since the year 2000, there have been major shifts in law, policy, and the technological landscape that have had profound impacts on patent prosecution practice at the USPTO. Although we often focus our analytics on small corners of the USPTO, such as individual industries, art unit groups, and practice entities, we rarely take a step back to evaluate the general trends at work across the entire USPTO. Now, we'll pull back the curtain to reveal a few USPTO-wide prosecution trends.  

This page is intended to be a general resource for patent prosecutors to use to get a bird's-eye view of the state of patent prosecution trends across the USPO. 

Check back often, as we will periodically update this information and add new charts and graphs to bring you even more groundbreaking insights.

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. 

As part of our ongoing effort to uncover the firms that perform the best using various key metrics of skill in patent prosecution (allowance rate, speed to disposition, number of claims lost, etc.), we wanted to rank some of the most efficient law firms for patent prosecution. Now, there are several methods for measuring "efficiency" in patent prosecution, the most obvious being average speed to disposition and average number of office actions. We have previously ranked the speediest firms in several technology centers (here, here, and here), but we have not yet ranked firms using average number of office actions as an indicator of overall efficiency. Below are the top 10 firms that receive the fewest office actions. They are ranked by the average number of office actions they received between publication and disposition for all utility patent applications disposed between January 1, 2005 and March 31, 2016. In order to achieve the most accurate sample sizes, we limited the pool of eligible firms to those that had disposed of at least 5,000 applications during the relevant time frame.

Integration will let users access examiner statistics from within their favorite management software

 

Juristat is proud to release its ranking of the Top 100 U.S. Patent Firms.  This is the only ranking of U.S. patent prosecution firms that is based on the objective measurement of those firms' performance in front of the United States Patent and Trademark Office.

In the post-Alice era, allowances in the 3620s, 3680s, and 3690s e-commerce art units are an increasingly rare sight. The decision has wreaked havoc on the way the courts and patent examiners interpret software and business methods claims, making its application unpredictable and inconsistent. Many commentators allege that the decision is being applied overzealously by many examiners, resulting in almost every application in the e-commerce art units receiving an Alice rejection, which in many cases can be a death warrant.
Since Alice was decided in June of 2014, the percentage of applications receiving § 101 rejections in the e-commerce art units jumped dramatically from about 30% before Alice to over 80% shortly after Alice, with several examiners citing Alice in 100% of their rejections. Despite this arguably harsh application of the decision, business methods patents are still being issued, albeit quite a bit more infrequently than in the past. With careful strategic planning and an expert understanding of the intricacies of the case, skilled patent attorneys are still able to obtain business methods patents for their clients.