AFCP 2.0 requests generally have a positive impact on applications that use them, but there are a few art units at the USPTO where their effects are particularly dramatic.
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. Just like Alice in those tech sectors, Mayo/Myriad rejections have also made patent prosecution for biotech, pharma, and life science applications much more difficult. In this study, we briefly review the Mayo and Myriad cases, take a look on the lasting effects they have had on the USPTO, and discuss a few ways that big data can help applicants get around Mayo/Myriad rejections.
The legal industry has been much slower to adapt to the use of big data analytics than other industries such as financial services and healthcare, but that is beginning to change. Increasingly, large corporate clients are demanding that their outside counsel incorporate big data analytics into their practices. In this article, we will discuss a few of the reasons why this is the case and how law firms can get started.
A total of about 37% of all § 101 rejections in Technology Center 1600, which handles the bulk of biotech, pharma, and life sciences 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.
The top firms in Technology Center 1600 based on number of applications filed, average speed to allowance, average number of office actions, allowance rate, and overall Juristat ranking.
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, but that is only for the USPTO at large. There a few art unit groups where applicants receive decisions in much less time.
Michelle Lee's resignation as director of the USPTO was abrupt and took 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.
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 this publication, we 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.
It's no secret that obtaining a software or e-commerce patent is much harder than it used to be due to the effects of Alice. Overall, only about half of applications that receive an Alice rejection will ever be allowed. However, these firms manage to do quite a bit better than that.
In the absence of guidance from the USPTO about the progress of its After Final Consideration Pilot program, many practitioners have been left wondering whether participation in the program is worthwhile. Luckily for our readers, we don't need to wait for official USPTO statistics to evaluate the success of the program.