As companies and markets increasingly view patents not just as a defensive shield but as strategic assets (e.g., for licensing, enforcement, or other potential revenue generation), the prosecution phase is critical. Those looking to increase market dominance or build monetizable portfolios should be aware of potential shifts in the behavior of patent examiners in 2026 in response to several changes in 2025. There are key opportunities for patent applicants to gain meaningful upside (or face missed value) depending on how they respond.
While arguably the biggest shifts in 2025’s patent landscape continue to be at the post-grant level, e.g., at the PTAB, such changes seem less likely to move the needle on upstream examiner behavior during prosecution (though downstream value and risk calculus will continue to be affected). But there are several other changes that appear more likely to influence examiner behavior in the coming year, and forward-looking IP counsel can capture value if tuned in to these developments.
Fee Overhaul: When Continuations and IDSs Get Expensive
In January 2025, the USPTO implemented a wide-ranging fee adjustment, including a new Continuing Application Fee (CAF) for continuations filed six or more years after the earliest-benefit date (and an even higher fee for continuations filed nine years or later), along with a fee for Information Disclosure Statement (IDS) submissions including more than a nominal number of items. These increases can affect portfolios with older continuing applications that need a tune up in response to how markets have developed since the first-filing, or tailoring claim scope against design around strategies.
If companies begin to trim “placeholder” continuations and are more selective about IDS bulk-filings patent examiners may be assigned to fewer families having a high number of continuations and become more accustomed to smaller IDS submissions. This evolution, along with continued focus on production volume, may result in a renewed press for compact prosecution. One might expect stronger early office actions and an earlier focus on potential narrowing of claims.
Counsel should consider:
- Adjusting budgets for strategic, early-filing of continuations, and front-load more measured IDS costs. This could be a change from a “wait-and-see” approach, which may be a culture shift in IP priorities.
- Integrating early prior art searches to avoid the need for larger blanket-IDSs later.
- If identified art truly needs to be cited and avoid defaulting to a practice of overciting references out of an abundance of caution.
- Taking advantage of expedited examination programs such as Track One, PPH, or the recently launched Streamlined Claim Set Pilot Program to shorten prosecution timelines.
- If a long-prosecution strategy is anticipated (for example, in anticipation of future licensing or enforcement), filing continuations sooner to avoid the CAF—and tracking those dates for early budgeting decisions. Also make sure to account for potential higher continuing application fees in portfolio economics.
While higher fees may push companies to fewer, albeit stronger, continuation families, this can be a net-positive. Focusing early on business alignment will only improve clarity for downstream value. Budgeting smartly and streamlining early prosecution can only increase the portfolio’s position.
Issuance Timing & Continuation Windows—Shorter Time-to-Grant
This past year the USPTO shortened the interval between issue fee payment and patent grant, making it extremely fast by comparison to the old timeline. For companies who consider and track issuance timing as part of their go-to-market, deal flow, or enforcement strategy, this change matters. Additionally, going into 2026, companies may see an increase in earlier allowance rates as a result of backlog reduction. Once an issue fee is paid, though, tighter deadlines for filing continuing applications may squeeze even farther, meaning that continuing application strategy including file-ready claims must be firmly in shape earlier.
As always, issuance dates must be monitored carefully—no one wants to be surprised by an earlier than expected issue date without a continuation decision in place. Consider tightening internal prosecution schedules in response, for example, by front-loading strategy sessions, claim drafting, and early responses so you are ready when the examiner pushes to allowance and the USPTO moves quickly once the issue fee is paid.
Quicker time-to-grant after issue fee payment now has real strategic value, as do the USPTO’s production goals to shorten the entirety of time-to-grant. If companies plan to launch licensing campaigns, enter enforcement actions, or transact key patents once issued, the ability to time grant (or at least better anticipate timing) becomes a commercial lever.
§101 Subject-Matter Eligibility: Renewed Focus on AI/ML/Software
On August 4, 2025, the USPTO issued a targeted memo to examiners reminding them of guiding principles as to how to evaluate claims under § 101 (subject‐matter eligibility) with an initial focus in the AI/ML/software space. Among the reminders:
- “Examiners are reminded not to expand [grouping of mental processes] in a manner that encompasses claim limitations that cannot practically be performed in the human mind.”
- “Examiners should be careful to distinguish claims that recite an exception (which require further eligibility analysis) from claims that merely involve an exception (which are eligible and do not require further eligibility analysis).”
- Regarding analysis of a claim as a whole, “additional limitations should not be evaluated in a vacuum, completely separate from the recited judicial exception. Instead, the analysis should take into consideration all the claim limitations and how these limitations interact.”
- Regarding considerations of improvements, “The specification does not need to explicitly set forth the improvement, but it must describe the invention such that the improvement would be apparent to one of ordinary skill in the art. The claim itself does not need to explicitly recite the improvement described in the specification.”
- “Examiners are cautioned not to oversimplify claim limitations and expand the application of the ‘apply it’ consideration,” and “are reminded that the ‘apply it’ consideration often overlaps with the improvements consideration.”
- “Examiners are reminded that if it is a ‘close call’ as to whether a claim is eligible, they should only make a rejection when it is more likely than not (i.e., more than 50%) that the claim is ineligible under 35 U.S.C. 101. A rejection of a claim should not be made simply because an examiner is uncertain as to the claim’s eligibility.”
Applied correctly, these reminders should mean that applicants see fewer automatic §101 rejections for borderline claims in 2026 and a softer approach to § 101 rejections, which may help to reduce back and forth with examiners and shorten prosecution. Of course, strategic drafting and prosecution still emphasizes that the specification should be drafted to explain the problem in the art and the technical improvement provided by the invention to support the Applicant’s argument that the claims provide a practical application of the alleged judicial exception. That opens the door for more allowances in the coming year, particularly in software/AI fields when done right.
For example, companies can make sure to highlight technical improvements, specify algorithmic details, and show real-world implementations or advantages. Citing the memo and reminders should be done as a matter of course, and considering interviewing the case with the Examiner to focus in on the memo’s message. As more inventions in software/AI become potentially monetizable via licensing (and enforcement), stronger claims that avoid §101 traps at least at the USPTO may continue to increase value of such portfolios.
Incoming AI/Automation Tools in Examiner Search Workflows
Throughout 2025 the USPTO scaled up pilot programs using AI- and algorithm-assisted prior art search tools, such as the Artificial Intelligence Search Automated Pilot Program (ASAP). This includes advanced similarity search and design patent search tools. This is a structural shift that is critical to watch. Examiners already apply these tools, and as they develop and evolve, they may rely on more sophisticated tooling to surface key prior art more quickly and with (potentially) greater certainty.
If these tools bear fruit, examiners may be more likely to find higher-quality, and perhaps more unexpected, prior art earlier in the process. And this, in turn, could translate into less variability between examiners as well as fewer “art missed” surprises for applicants once a patent issues. If variability in search results decreases, prosecution will become more predictable, but potentially more demanding with better art on the table.
Proper planning from day one can make any shift easier to absorb. Companies can plan patentability studies before filing and draft claims to respond to the best references. As the USPTO looks to leverage AI tools for conducting searches, companies should also consider adopting AI search tools to identify relevant art before filing or at other times during prosecution or be at a disadvantage relative to the USPTO and competitors. Expanding and nailing down the rest of the specification to hedge against niche art also can help future-proof an application prior to filing. This means including more embodiment detail, implementation specifics, module descriptions, etc. In general, the more you give the examiner (and your future self) to distinguish from prior art during prosecution, the better the allowance prospects.
For portfolios looking at value, this means increased certainty of patent scope (good) but also likely increased up-front investment and higher standards to be in the game for the long haul (trade-off). Portfolios that clearly distinguish from art aggressively and have strong specifications will come out on top. Conversely, weaker portfolios may become harder to license/enforce with increased opportunity for other third-party AI search tools to increase defensive challenges to patent validity by providing a means to quickly and inexpensively identify relevant prior art.
Conclusion
2026 will be a pivotal year for strategic patent prosecution: the mechanics at the USPTO have shifted in ways that tie directly into future enforcement and licensing plans, market dominance through IP portfolio generation, and bottom-line legal budgets under scrutiny from product business units or other financial stakeholders. From fee and cost structures to issuance timing, §101 clarity and AI-augmented examiner tools, and post-grant calculus — the upstream prosecution choices you make today undoubtedly materially impact the downstream value of your patents.
Looking ahead, three honest assessments can help you take initial steps towards planning a successful patent prosecution strategy in the coming year:
(1) Have you updated your prosecution budgeting and filing strategy to reflect higher continuation/IDS fees and compressed timelines?
(2) Is your specification and claim drafting aligned with business objectives, especially in AI/software domains?
(3) Are you treating prosecution, post-grant strategy, and potential enforcement or other value realization as a single continuum rather than separate silos?
Considering these questions alongside patent counsel can help you unlock future value in your portfolio in 2026.
