News & Analysis as of

Alice/Mayo

Wolf, Greenfield & Sacks, P.C.

Avoiding the “Atomic Bomb of Patent Law”

The U.S. Court of Appeals for the Federal Circuit once called the remedy for inequitable conduct “the atomic bomb of patent law.” Inequitable conduct is a defense against patent infringement that can render a patent...more

McDonald Hopkins

The recent expansion of patent eligibility for AI inventions before the USPTO

McDonald Hopkins on

The new United States Patent and Trademark Office (USPTO) Director John A. Squires was sworn in on September 22, 2025 and wasted no time that week in expanding patent eligibility for AI related inventions. ...more

Fish & Richardson

PTAB Reverses § 101 Rejection Under Desjardins Framework

Fish & Richardson on

The Patent Trial and Appeal Board (PTAB) has issued a decision in an ex parte appeal reversing an examiner’s final rejection under 35 U.S.C. § 101 of claims directed to artificial intelligence (AI) based business methods. Ex...more

Holland & Knight LLP

Patent Eligibility Reform: Everyone Has an Opinion (and a "Love Actually" Relationship Ranking)

Holland & Knight LLP on

Section 101 Blog If you work anywhere near patent eligibility, the rhythm is familiar. Another year, another reform drumbeat. Draft language circulates on the Hill. Industry groups publish letters. Academics and the familiar...more

International Lawyers Network

The Recent Expansion of Patent Eligibility for AI Inventions Before the USPTO

Introduction - The new United States Patent and Trademark Office (USPTO) Director John A. Squires was sworn in on September 22, 2025 and wasted no time that week in expanding patent eligibility for AI related inventions. In...more

Maynard Nexsen

Patent Trolls: Seven Steps to Stop Them and How They Are Contributing to the 20% Uptick in Patent Litigation in 2025

Maynard Nexsen on

Who should read this article? Companies sued by patent trolls (NPEs) seeking to develop strategies to push back against NPE activity—and specifically companies in the following industries...more

Lowenstein Sandler LLP

USPTO Outlines New Path for Overcoming § 101 Rejections Through Rule 132 Subject Matter Eligibility Declarations

Lowenstein Sandler LLP on

What’s New: USPTO Embraces Evidence-Driven § 101 Practice - The U.S. Patent and Trademark Office (USPTO) recently issued two coordinated memoranda explaining how applicants can use Subject Matter Eligibility Declarations...more

Foley Hoag LLP

Guidance on Rule 132 Declarations for Patent Eligibility

Foley Hoag LLP on

Key Takeaways - Easier path to eligibility: The USPTO’s new guidance explains how to use sworn statements (SMEDs) to provide facts showing an invention is eligible for a patent....more

Alston & Bird

USPTO Clarifies Role of Declarations in Overcoming Subject Matter Eligibility Rejections

Alston & Bird on

The United States Patent and Trademark Office (USPTO) has issued new guidance encouraging applicants to use subject matter eligibility declarations (SMEDs), highlighting their potential influence at all stages of the...more

McDonnell Boehnen Hulbert & Berghoff LLP

Why the Alice Test is Stupid, Part IV: The Usefulness Paradox

One might be forgiven for assuming, based on a cursory reading of the Constitution or perhaps a fleeting bout of logic, that the U.S. patent system exists to promote the progress of science and useful arts. Historically, this...more

BakerHostetler

Strategies and Considerations for Optimally Using Subject Matter Eligibility Declarations Before the USPTO

BakerHostetler on

On Dec. 4, 2025, U.S. Patent and Trademark Office (USPTO) Director Squires issued new guidance to patent examiners and applicants via a pair of memoranda (Guidance) encouraging the use of subject matter eligibility...more

Womble Bond Dickinson

USPTO Suggests Use of Rule 132 Declarations and Updated Examiner Guidelines to Address Patent Subject Matter Eligibility Issues

Womble Bond Dickinson on

In follow up to the August 4, 2025 guidance and September 26, 2025 In re Desjardins decision, the USPTO recently took another significant step to provide patentees pursuing patent protection additional tools to address patent...more

Seyfarth Shaw LLP

Hottest Patent Term of 2026? SMED.

Seyfarth Shaw LLP on

Every year has its “it” term.In 2025, the crown belonged to AI, and rightfully so. AI dominated the headlines, flooded the USPTO’s dockets, and triggered more §101 rejections than any examiner would care to admit. If you...more

ArentFox Schiff

SMEDs in the Spotlight: USPTO Memo Highlights Use of Rule 132 Declarations for § 101

ArentFox Schiff on

On December 4, the US Patent and Trademark Office (USPTO) issued a memorandum to the Patent Examining Corps reinforcing its existing subject matter eligibility framework under 35 U.S.C. § 101 and calling renewed attention to...more

McDonnell Boehnen Hulbert & Berghoff LLP

USPTO Issues Memoranda on Subject Matter Eligibility

Late last week, the U.S. Patent and Trademark Office (USPTO) published three memos addressing its latest policies regarding subject matter eligibility. These included “Subject Matter Eligibility Declarations” from Director...more

Morrison & Foerster LLP

USPTO Puts Subject Matter Eligibility Declarations in the Spotlight

On December 4, 2025, U.S. Patent and Trademark Office (USPTO) Director John Squires issued two memoranda addressing subject matter eligibility and spotlighting an additional pathway to overcome a rejection under 35 U.S.C. §...more

Venable LLP

The § 101 Reset for 2026

Venable LLP on

Patent practitioners have seen a shifting landscape for patent eligibility under 35 U.S.C. § 101 since the Supreme Court’s 2012 and 2014 seminal decisions in Mayo and Alice. Now, the United States Patent and Trademark Office...more

McDonnell Boehnen Hulbert & Berghoff LLP

Why the Alice Test is Stupid, Part III: Eligible Independent Claims Can Have Ineligible Dependent Claims

Once upon a time, patent eligibility was not controversial or difficult to understand. Then along came Alice Corp. v. CLS Bank, and with it the Supreme Court’s bright idea to replace statutory clarity with metaphysical...more

McDermott Will & Schulte

Precedential shift: USPTO clarifies patentability of AI training methods

McDermott Will & Schulte on

On November 4, 2025, the Director of the United States Patent and Trademark Office (USPTO) designated as precedential an appeals review panel (ARP) decision vacating the Patent Trial & Appeal Board’s § 101 rejection of claims...more

McDonnell Boehnen Hulbert & Berghoff LLP

Why the Alice Test is Stupid, Part II: The Mental Steps Doctrine Literally Makes No Sense

From a technical standpoint, everything a computer does involves reading, manipulating, and storing information through microcode instructions that move around 0’s and 1’s. Each operation performed by a processor, such as...more

McDonnell Boehnen Hulbert & Berghoff LLP

Why the Alice Test is Stupid, Part I: It is Actually Three Different Tests

It has been over a decade since the Supreme Court blessed us with the two-step framework for patent eligibility under 35 U.S.C. § 101 in Alice Corp. v. CLS Bank. First, one must determine whether the claim at issue is...more

Knobbe Martens

The USPTO’s Evolving Approach to Patent Eligibility: Insights from Director Squires’ AIPLA Address

Knobbe Martens on

On October 31, 2025, Director Squires spoke to the American Intellectual Property Law Association and provided a forceful statement on his view for the direction of patent law. Of particular interest were his comments on...more

McDermott Will & Schulte

Failure to reassess subject matter eligibility after similar claims invalidated justifies attorneys’ fees

McDermott Will & Schulte on

Following a dismissal on the pleadings, the US District Court for the Southern District of New York granted the defendant’s motion for attorneys’ fees under 35 U.S.C. § 285 after concluding that the asserted patent was...more

Holland & Knight LLP

Judge Bryson Specifies 6-Part Synthesis of Section 101 Standards

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In an opinion synthesizing and applying the current state of Section 101 law, Judge William Bryson of the U.S. Court of Appeals for the Federal Circuit, sitting by designation in a district court, held on summary judgment...more

Proskauer - The Patent Playbook

Patent Practitioners are Unsettled Regarding Seemingly-Settled Section 101 Jurisprudence

Patent eligibility under 35 U.S.C. § 101 should be a straightforward threshold question: any “new and useful process, machine, manufacture, or composition of matter” is eligible for protection. Yet over time, this once-clear...more

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