The Supreme Court’s Alice v CLS Bank decision (2013) restricted categories of patentable subject matter in both the courts and in the Patent Office, including at the Patent Trial and Appeal Board. A look at the statistics at the PTAB shows just how effective a § 101 challenge can be.
The Supreme Court in Alice held that patents claiming “abstract ideas” are invalid and not eligible subject matter. A “generic computer” performing generic functions on a fundamental economic practice is not a sufficient “inventive concept” to transform an abstract idea into a patent-eligible application of that idea. The invention as a whole must do “something more,” such as improving the functioning of the computer itself, or effect an improvement to the technology or technical field.
In the PTAB (as in the courts and the rest of the Patent Office), subjecting patent claims to the “inventive concept” test in order to be deemed eligible for patent protection has had an especially drastic effect on software, and business method/financial patents. Basically, any patent seeking to claim a fundamental or long prevalent economic practice combined with a generic computer can no longer be considered eligible subject matter.
In the PTAB, petitioners can challenge patents under § 101 either through a Covered Business Method Review petition or a Post Grant Review petition. Using either of these tools, the statistics gleaned from decisions tagged by Docket Navigator tagged as § 101 decisions (as of October 21, 2015) indicate that petitioners have thus far been extremely successful, succeeding at a 90% or higher in almost all of the PTAB decisions concerning a § 101 challenge:
The rate of success of § 101 challenges is shown even more starkly in these pie charts (blue equals success):
The bar graph below illustrates the total number of decisions of a particular decision type that address § 101 (e.g. just under 45 total institution decisions address § 101). The colors show the result of the decisions, with the blue portion of the bar representing decisions in which at least one claim was unpatentable under § 101 and the red portion representing decisions in which all the claims were found patentable under § 101. For example, for institution decisions, the overwhelming majority found claims unpatentable, and all final written decisions resulted in claims being found unpatentable. It also shows that motions to reconsider § 101 decisions (either institution or final) are entirely unsuccessful.
The following bar graph reorganizes the data of the prior graph by type of outcome:
As with other early PTAB decisions, it is likely that the success rate of § 101 challenges will go down with time. But these early statistics suggest that at least with respect to the results at the PTAB, the Supreme Court’s guidance in Alice really has changed the rules for judging patent subject matter eligibility.
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