The Office taking a proactive approach to reviewing cases on appeal to the Federal Circuit is good news for applicants facing Alice based 101 rejections.

Yesterday I wrote about the United States Patent and Trademark Office filing a Director’s Unopposed Motion to Vacate and Remand in In re Intelligent Medical Objects, Inc., which was filed on June 5, 2018. This was not the only such motion filed by the USPTO. On June 4, 2018, the Office filed an Unopposed Motion for Remand in In re: Allscripts Software, LLC, which similarly asks the United States Court of Appeals for the Federal Circuit to vacate the decision of the Patent Trial and Appeal Board and remand the appeal to the USPTO so the Board can reconsider eligibility rejections of the claims in question in light of Berkheimer.

The unopposed motion reads:

This appeal arises from the ex parte appeal decision of the Patent Trial and Appeal Board (Board), affirming the final rejection of claims 1-20 under 35 U.S.C. § 101 in Application Serial No. 14/320,355. In reaching its decision, the Board held that § 101 is an issue of law and that while evidence “may be helpful in certain situations,” there is no requirement to support a § 101 rejection with evidence under the patent-eligibility analysis articulated in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014). After the Board issued the decision on appeal, this Court issued its decision in Berkheimer, holding that the question of whether a claim element is well-understood, routine, and conventional under Alice Step #2 is a question of fact and requires evidentiary support, particularly where the issue is disputed. Appellant Allscripts asserts that the Board decision here is inconsistent with Berkheimer. Additionally, the USPTO has since issued guidance implementing Berkheimer in ex parte examinations like this one… The Director believes that it is in the best interest of the parties and this Court to remand the case to the USPTO to allow the Agency to reconsider the patent eligibility of the pending claims in light of Berkheimer and related USPTO guidance. A remand to permit further administrative proceedings in light of these subsequent developments would prevent this Court, Allscripts, and the USPTO from needlessly expending resources. See, e.g., In re Gould, 673 F.2d 1385, 1387 (CCPA 1982). That is particularly true under these circumstances, where the intervening developments relate to factual issues that should be considered by the Agency in the first instance.

The Office taking a proactive approach to reviewing cases on appeal to the Federal Circuit is good news for applicants facing Alice based 101 rejections. Obviously, now is not the time to allow those cases to go abandoned if they remain commercially relevant.