Getting the PTAB In Line

There are many great blog posts out recently commenting on the revised Patent Subject Matter Eligibility Guidance recently issued by the USPTO regarding patent-eligible subject matter under 35 U.S.C. § 101. In particular, now that PTAB decisions are being issued after issuance of the new guidelines, we can start to look for trends (see, which has a listing on a recent blog post).

The first important fact to recognize is that the PTAB is generally following the guidelines. Why is this important? Isn’t it a given that the PTAB would follow USPTO guidelines? Well, no, it is not a given that the PTAB will follow USPTO guidance at all. In fact, in the past, the PTAB has expressly claimed on several occasions that they are not bound by such guidance, particularly in the context of Section 101. Consider the PTAB decision in 2018 in ex parte Lukyanov, (11/607,828), in which the panel stated the following regarding the USPTO’s Section 101 guidance “[a]s an initial matter, we are not bound by the Interim Guidance.”

Whether the PTAB was correct in this matter in light of administrative law can be left for another day because it seems clear that in 2019 the PTAB is being very deliberate in their initial decisions to follow the new guidance. Perhaps it is the new director’s leadership, and/or that the new guidelines state that “[a]ll USPTO personnel are, as a matter of internal agency management, expected to follow the guidance.”

Having greater certainty at the PTAB regarding Section 101 is a potential game changer. While 101 rejections are still affirmed at a relatively high rate, applicants will now have a much better idea of what test will be applied and how the test will be administered. This means that applicants who operate strategically can start drafting applications, and re-directing prosecution now to improve their chances of successfully overcoming a Section 101 rejection.