News & Analysis as of

Alice/Mayo Patent Applications

Knobbe Martens

Practical Application and Particular Treatment: What the USPTO’s December 4 Memorandum Means for Life Sciences §101 Eligibility

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The USPTO’s December 4, 2025 memorandum on Subject Matter Eligibility Declarations (SMEDs) seeks to raise awareness of the “underutilized path” of submitting Rule 132 declarations, referred to as “SMEDs”, for supporting §101...more

Baker Botts L.L.P.

A New Playbook for § 101? The USPTO's Guidance on Using Technical Evidence

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Section 101 eligibility remains one of the most unpredictable and frequently contested areas of U.S. patent practice, particularly for software, artificial intelligence, and machine learning....more

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

Fish & Richardson

PTAB Reverses § 101 Rejection Under Desjardins Framework

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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

Lowenstein Sandler LLP

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

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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

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

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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

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

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

McDonnell Boehnen Hulbert & Berghoff LLP

Beyond the Noise: Unpacking Four Years of Data on PTAB’s Consistent § 101 Hostility

The state of patent eligibility appeals under 35 U.S.C. § 101 before the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO) is defined by a singular, overwhelming finding — abysmally low...more

BakerHostetler

Shifting Views on Section 101 and AI under Director Squires

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In a rare procedural move, the United States Patent and Trademark Office’s (USPTO) director-convened Appeals Review Panel (ARP) recently vacated a § 101 rejection that had been introduced by the Patent Trial and Appeal Board...more

Womble Bond Dickinson

USPTO Director Indicates Significant Shift in AI Patent-Eligibility

Womble Bond Dickinson on

New U.S. Patent and Trademark Office (USPTO) Director John Squires has been on the job less than a month, but he has already indicated a significant shift in the USPTO’s willingness to extend patent protection to artificial...more

Kilpatrick

Patent Office Appeals Review Decision Suggests Policy Shift Toward Broader Eligibility for AI-Related Patent Applications

Kilpatrick on

Last week, the USPTO published a rare Appeals Review Panel (ARP) decision in Ex parte Desjardins, Appeal 2024-000567, September 26, 2025 (“ARP Decision”), that reversed a finding of ineligible subject matter in a patent...more

ArentFox Schiff

Landmark Patent Appeal Decision Strengthens Protection for AI and Machine Learning Innovations

ArentFox Schiff on

A significant Patent Trial and Appeal Board (PTAB) decision authored by the US Patent and Trademark Office (USPTO) leadership, including the new USPTO Director John A. Squires, signals the importance of artificial...more

Morrison & Foerster LLP

USPTO Director Signals Support for AI Patent Eligibility

Just days after John A. Squires was sworn in as the 60th Director of the U.S. Patent and Trademark Office (USPTO) on September 23, 2025, he convened the rarely used Appeals Review Panel (ARP) and issued a decision in Ex parte...more

McDonnell Boehnen Hulbert & Berghoff LLP

New USPTO Director Squires Takes an Early Position on Patent Eligibility

Just a few days into his tenure as director of the U.S. Patent and Trademark Office, John A. Squires has sent a message to the Patent Trial and Appeal Board (PTAB) to tone down its aggressive use of § 101. This message comes...more

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