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Alice/Mayo Patent Examinations

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

Baker Botts L.L.P. on

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

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

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

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

Mayer Brown

USPTO Encourages AI Innovation as Federal Circuit Exercises Caution

Mayer Brown on

With the continued rise of generative artificial intelligence (AI), the question of how the United States Patent and Trademark Office (the “USPTO”) and courts will apply patent-eligibility requirements to AI has been at the...more

McCarter & English, LLP

Helpful Reminders for Patent Eligibility of AI, Machine Learning, and Other Software-Related Inventions

Patent applications for artificial intelligence (AI), machine learning, and other software-related inventions are often rejected by the US Patent and Trademark Office (Patent Office) as being too abstract and thus ineligible...more

BakerHostetler

Navigating Patent Eligibility in the Age of AI: Strategic Insights from the USPTO’s August 2025 Guidance

BakerHostetler on

The August 4, 2025 memorandum (Memo) issued by the U.S. Patent and Trademark Office (USPTO) clarifies how examiners should approach subject matter eligibility under 35 U.S.C. § 101. Importantly, the Memo provides critical...more

Morgan Lewis

USPTO Memo Clarifies AI/ML Patent Eligibility Rules

Morgan Lewis on

Deputy Commissioner for Patents Charles Kim issued a memorandum to three technology centers reminding examiners how subject matter eligibility should be evaluated under 35 USC § 101. These technology centers often handle...more

Foley & Lardner LLP

USPTO Clarifies Eligibility Examination Standards for Software Innovations

Foley & Lardner LLP on

On August 4, 2025, the U.S. Patent and Trademark Office (USPTO) released a new memorandum to patent examiners in Technology Centers 2100, 2600, and 3600, providing targeted reminders on evaluating subject matter eligibility...more

ArentFox Schiff

USPTO Aims to Boost Patent Eligibility of AI and ML Inventions

ArentFox Schiff on

The US Patent and Trademark Office (USPTO) has issued new guidance to clarify and improve the evaluation of patent eligibility for artificial intelligence (AI) and machine learning (ML) inventions in order to foster...more

Dorsey & Whitney LLP

Patent Office Publishes Subject Matter Eligibility Guidance

Dorsey & Whitney LLP on

On July 16, 2024, the United States Patent and Trademark Office (“USPTO”) announced new guidance for examination of patent applications directed to critical and emerging technologies, including artificial intelligence (AI)....more

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