News & Analysis as of

Alice/Mayo United States Patent and Trademark Office

Knobbe Martens

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

Knobbe Martens on

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

Fenwick & West LLP

Federal Circuit Issues Precedential Decision Reframing Patent Eligibility Analysis Under Section 101

Fenwick & West LLP on

Patent eligibility decisions are not new. Courts have grappled with what can and cannot be patented for years, especially in the technology and software spaces. A recent decision from the U.S. Court of Appeals for the Federal...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

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

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

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

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

Haug Partners LLP

An Overview of the PERA, PREVAIL and RESTORE Acts: How Pending Patent Legislation Could Impact Patent Holders’ Rights

Haug Partners LLP on

There is pending legislation before Congress that, if passed, would shift the current patent landscape in favor of patent owners. The following three bills have been introduced in Congress with bipartisan sponsorship and...more

Foley & Lardner LLP

From Abstract to Applied: How Desjardins Can Reframe Patent Protection for AI in Health Care

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For a decade, innovators at the intersection of artificial intelligence (AI) and precision medicine have faced a stubborn paradox: the very breakthroughs in software and machine learning that enable early cancer detection and...more

Mayer Brown

USPTO Encourages AI Innovation as Federal Circuit Exercises Caution

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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

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