Tuesday, September 11, 2007

"Waiting for Nuijten" - 101 Rejections at the BPAI (part 1)

Needless to say, the treatment of (non) statutory subject matter at the USPTO is becoming more contentious for practitioners. In Re Nujten, which was argued before the CAFC over seven months ago (!) (to hear an MP3 of the oral arguments, click here), is expected to resolve at least some of the issues regarding 35 U.S.C. 101.

The Nuijten decision could not come soon enough. The PTO has issued interim guidelines dealing with patentable subject matter almost two years ago and, despite the numerous comments and criticisms that were submitted by the public, the PTO has not provided any updates. It has been reported to the 271 Blog that a portion of these guidelines have been repudiated internally at the PTO (e.g., "a computer processing method . . ." is now considered acceptable form), but this information was not openly published.

2007 will be a banner year for 101 rejections, and the current crop of rejections have enjoyed longer staying power at the PTO. This is evidenced by the larger numbers of rejections that are being appealed to the BPAI. After bottoming out in 2005, 101 rejections are reaching new heights on appeal:

2007 - 55 cases
2006 - 43 cases
2005 - 14 cases
2004 - 18 cases
2003 - 30 cases
2002 - 26 cases
2001 - 30 cases

To make matters worse, the BPAI is boldly engaging in a form of "judicial activism" by increasingly issuing 101 rejections sua sponte. Worse still, the rationale underlying many of these rejections is based on cases that have been long overruled (In re Warmerdam, In re Schraeder, Freeman-Walter-Abele, etc.).

(to be continued . . . )

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