Like a moth to a flame, this week I was again drawn to the USPTO Office Actions data set. Although, I previously found that coverage limitations of the data set mean it is probably not ready for assessing the per-art-unit impact of Alice, there is still a ton of interesting information in there.
This week rather than focusing on just 101, I decided to look at all types of rejections. Specifically, I looked at what types of rejections are present in the last action before an application is either allowed or abandoned (abandoned for real, not for an RCE).
Rejections Present in Last Action Before Final Disposition
The chart above shows the percentage of last actions containing the various types of rejections. Below are some of the things I find interesting in this chart.
102 Rejections Have Been Falling While 103 Rejections Have Been Rising
The first long-term trend I noticed here is that 103 rejections have been rising while 102 rejections have been falling. The optimist in me (he’s not very influential, but he is in there) says this is a sign of an improving patent system. A 102 rejections is appropriate only where “the identical invention must be shown in as complete detail as is contained in the … claim.” (my favorite quote in arguing 102 rejections). Hopefully applicants are not spending a lot of time and money trying to claim such things. I also hope that examiners are spending less time trying to shoehorn 102 rejections into situations where a 103 is required (I presume this is done to avoid having to come up with a reasonable motivation to combine).
All Types of Rejections Peaked in 2015
Every type of rejection peaked in 2015. Very very strange. Correlation is not causation, the only hypothesis I have is that Alice threw so much confusion and chaos into the patent system that examiners (likely subconsciously) just decided the safest move was to reject everything for any reason they could find. Interestingly, 102 and 103 rejections seem to have corrected in 2016 to resume their earlier trajectories, whereas 112 rejections do not appear to have corrected.
112 Rejections Have Been Trending Slowly Up for a Decade
Not sure what to make of this. Something to possibly investigate in the future.
Bilski Where Art Thou?
At least in my limited EE world view, Bilski was the only thing that came close to Alice in terms of causing widespread panic among prosecutors. I thought there would be a big spike in 103 rejections in 2010/2011. Maybe I am forgetting and maybe the Bilski writing was already on the wall in 2008…?
101 Rejections are the Clear Outlier
If you look at each type of rejection, you can see the trend for allowed applications closely tracks the trend for abandoned applications – except post-Alice 101 rejections.