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March 06, 2023

Comments

Business Methods should be 31.3 not 3.13.

Interesting data otherwise.

Astra,

74663 / 23882 = 3.126329

Mike

"Each TC is further subdivided into art units (usually 4-10) and examiners are assigned to these art units." ??? Oops, TCs are divided into Art GROUPS each run by one or more TC Directors, which are then further divided into Art Units each run by one or more Supervisory Patent Examiners. There are many more than the stated 10 Art Units in the typical TC. For example, TC 1600 has 7 main groups and a total of 48 main units at about 8-30 examiners per unit: https://ptoweb.uspto.gov/patents/1600/

If 103 rejections were intended as the reference or basis for normalization, then why would you report 103 in the numerator and 101 in the denominator? To avoid fractions? Seriously? Better to multiple by one hundred or otherwise create a score than to write about a relationship inverse to the intent of the article. This creates the awkward result of writing "TC 3600 has the HIGHEST likelihood of an Alice rejection by far when compared to § 103 rejection volume," but the LOWEST table value of "3.13."

The entire value of this article, such as it is, is captured in the implicit sentence, "...TCs that have relatively high rates of Alice rejections... receive a high volume of software applications." Hardware, wet steps, machines, manufactures, etc. tend to implicate Alice less often, while data processes do so more often. It's that simple. Of course, this doesn't mean that software can't be patented (e.g. Enfish, McRO, etc.), but it does mean that the courts have created an additional filter regarding software patents, among other types of judicial exception. Looked at another way, if there is a possible judicial exception, then to what extent does the technology lend itself to integrating that exception into the real, physical world as a practical application? Who should receive the benefits of a patent, and what should that patent contribute to the actual technology field and the economy?

To write that "TC" is an interesting variable correlating with the rate of Alice rejections, misses the obviously more relevant variables of technology type and even simply the balance of calculational process versus hardware, machine, manufacture, etc. regardless of technology type. Beginning an Alice inquiry with a focus on "TC" is like beginning an average annual temperature inquiry by asking about which U.S. state, in which clearly there's a more relevant variable, i.e. latitude. Why not just start with latitude? All of this is alluded to in passing near the end of the article, but it would seem to have made more sense, before posting the article, to have simply revised according to that penultimate paragraph. Instead, the closing sentence appears misleading. Despite TC predictions and "steering tools," it's the underlying technology that properly triggers Alice analysis, not attempts to game the assigned TC.

Also, what about outcomes? Alice is not a bar to patentability. It is a hurdle, just like each other statute. Which technologies receive the most applications? How does the final rate of allowable claims vary by technology? TC data may have been available, but it was a poor choice for this analysis.

FC:

Not sure if you practice in this field, but when you say "Despite TC predictions and 'steering tools', it's the underlying technology that properly triggers Alice analysis, not attempts to game the assigned TC" I have to disagree. This is not at all what we see. TC, AU and examiner proclivities are highly determinative of whether you receive a 101 rejection and how hard it is to overcome.

I've spoken with examiners who feel like their AU and TC heads instruct them to issue and maintain 101 rejections. Other examiners have told me that the 101 decision is entirely up to them.

In an ideal world, the tech would be the determining factor in the eligibility analysis. But this is the real world and the real world is messy. The USPTO very much so.

And this analysis was performed with data that is publicly available and that readily lends itself to analysis. If you have a better methodology, feel free to carry it out and post the results in a comment. I'd be interested in seeing that.

Mike,
Good points above. Re when to write and maintain Alice rejections, I've also had the experience of various policies being set at the PTO, varying over time and yes by group, unit and examiner. Sometimes such policy is unwritten and more of a tone. At least in TC1600, most often this seems either to come at the TC level, which often appears to be driven by OPLA (the internal patent law team), or to vary at the individual examiner level.
Thanks for your analysis. At the very least it stimulates discussion, using available data as you mention.
FC

Mr. Borella,

Enjoyed your presentation today.

Thanks Skeptical.

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