Guest Post by Stephen C. Glazier, Partner at Akerman LLP
On April 26, 2018 the U.S. Patent Commissioner, Andrew Hirshfeld, spoke at our webinar regarding current developments at the U.S. Patent Office. [Link Below]
A major theme of Commissioner Hirshfeld’s remarks was the PTO’s revived focus on increasing reliability, certainty, and enforceability of issued patents and the application process. The underlying goal here is to further increase the value of patents and their beneficial impact on innovative products and businesses.
The Commissioner stated that a first step toward this policy goal will be pursued by new PTO guidance to Examiners and the applicants regarding the application of the Alice-Mayo test for patent subject matter eligibility under Section 101. Other possible PTO guidance is also being considered on various current issues.
The Commissioner pointed out that a first result in this effort was the very recently published PTO guidance, the “Berkheimer Memorandum“, which can be viewed at this link: https://www.uspto.gov/sites/default/files/documents/memo-berkheimer-20180419.PDF. This memo addresses the question of whether an additional element, or combination of elements, represents “well-understood, routine and conventional” activity in a claim directed to an abstract idea, for example, and hence constitute “something more” under the Alice-Mayo test (i.e., patent eligible subject matter). The memo requires examiners to expressly support their positions with a citation to show an element is well-understood, routine or conventional. This should mitigate the volume of Alice rejections. The Commissioner indicated that this memo can currently be used as guidance, despite the fact that it is in the period for public comment until Aug. 20, 2018.
Many commentators feel that this will benefit software and medical diagnostic patents, since Alice rejections are concentrated in these technologies.
The Commissioner commented on volume and other metrics at the PTO. The number of new patent applications has increased every year since 2009, with about 450,000 new cases filed last year (or about 600,000 if RCE’s are counted). However, the percentage of RCE’s is declining. The average time to first action is now about 15 months, and the final time to conclusion of prosecution is about 24 months. Average pendency of Track One applications until issuance is only about 12 month from filing; although, the allowance rate for Track One is about the same as for regular applications. The annual number of new Track One applications is down slightly, but remains near the historical maximum of about 10,000 annually. There are currently about 8,200 patent examiners, of which about 4,700 are primaries. There are approximately 500 art units.
Related issues and other questions were addressed by the Commissioner in the webinar. Some of these issues include: (1) recent Supreme Court patent decisions, (2) material differences in the allowance rates of various examiners, art units and technology centers, and (3) the process for assigning applications to examiners, art units and technology centers.
A video recording of the Commissioner’s opening remarks, and the subsequent Q&A session with the Commissioner, may be reviewed in their entirety at this link: https://www.youtube.com/watch?v=svxQH7a3SwM&feature=youtu.be