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Manual of Patent Examining Procedure (MPEP)

Cooley LLP

PTAB Rehearing Limits Double Patenting Rejections of Earlier Patent Applications From Later-Filed Family Members

Cooley LLP on

In Ex parte Baurin (Appeal 2024‑002920), the Patent Trial and Appeal Board (PTAB) denied the examiner’s request for rehearing and reaffirmed its prior reversal of six nonstatutory obviousness‑type double patenting (ODP)...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

Sterne, Kessler, Goldstein & Fox P.L.L.C.

IP Hot Topic: Is This Clear Enough? A Caution Against Claiming Transparency but Excluding Translucency From a Design Patent’s...

A U.S. design patent protects how something looks, as opposed to how it works. An applicant conveys that look primarily using drawings. Typically they use line drawings, so that the scope of protection is focused on the shape...more

Seyfarth Shaw LLP

Big Trouble in Small Entity: The USPTO’s New Crackdown on Fee Status Fraud

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Another day, another change at the USPTO. If you have ever filed a patent application, you know there is a section that asks for your entity status: Large, Small, or Micro. If you have ever asked yourself whether size...more

McDermott Will & Schulte

Complete inventive entity required to avoid “by another” prior art under pre-AIA § 102(e)

McDermott Will & Schulte on

The US Court of Appeals for the Federal Circuit affirmed the Patent Trial & Appeal Board’s decision finding claims directed to cladribine regimens for treating multiple sclerosis unpatentable as obvious....more

Baker Botts L.L.P.

Navigating the New Landscape of AI Patent Protection

Baker Botts L.L.P. on

The explosive growth of artificial intelligence has created unprecedented challenges for patent protection. While AI may be "the most transcendent and transformative technology of our time," as USPTO Director John Squires...more

McDonnell Boehnen Hulbert & Berghoff LLP

USPTO Issues Notice Regarding Improper Small and Micro Entity Status

The new Director of the Patent and Trademark Office, Undersecretary of Commerce for Intellectual Property John A. Squires has spent the last few weeks making serious policy changes in the Office (see “New Director Overturns...more

Thompson Coburn LLP

IP Corner – October 2025 Edition

Thompson Coburn LLP on

Welcome to TC’s IP Corner® Halloween edition. We are excited to share this quarterly newsletter with our clients, colleagues, and friends as we examine hot topics, interesting cases, and weird yet entertaining happenings in...more

Fitch, Even, Tabin & Flannery LLP

USPTO Issues Guidance Clarifying Subject Matter Eligibility for AI and Software Claims

On August 4, the USPTO issued a Memorandum to examiners in Technology Centers 2100, 2600, and 3600, providing reminders and clarifications on evaluating subject matter eligibility under 35 U.S.C. § 101. This guidance is...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

Ladas & Parry LLP

USPTO Efforts at Modernity Speeds Patent Issuance

Ladas & Parry LLP on

On May 13, 2025, the U.S. Patent and Trademark Office (USPTO) will expedite Issue Dates for patents. This will reduce the average time from three weeks to about two, so patent holders can bring their investments to market...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

IP Hot Topic: USPTO Publishes FAQs on Inventorship Guidance for AI-Assisted Inventions

Following the Inventorship Guidance for AI-Assisted Inventions, the United States Patent & Trademark Office (USPTO) has published a set of frequently asked questions (FAQs) and answers regarding the guidance...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Reissue’s Recapture Doctrine Clarified

Patent Examiners rely upon the Manual of Patent Examination Procedure (MPEP) to instruct application of the law to the most common patent prosecution situations. The MPEP’s forward refers to itself as a “guidance document”...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Sterne Kessler’s Reissue, Reexamination, and Supplemental Examination Practice Tips – November/December 2024

In the mid-2000s, the U.S. Patent Office (USPTO) determined that reexaminations would be more consistent and legally correct if performed by a centralized set of experienced and specially trained Examiners. As a result, the...more

Quarles & Brady LLP

Recent Examination Manual Update Includes Guidance on Protection of Computer-Generated Designs

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The Manual of Patent Examining Procedure (“MPEP”) is the examination manual used internally at the United States Patent & Trademark Office (“USPTO”) to guide examiners in the process of examining patent applications. In...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Reexamination Petition Practice Is a Critical Tool for Patent Owner Success

Takeaways: 1. Nontraditional and unique issue petitions are common for patent owners to properly prosecute reexamination proceedings. 2. Well-drafted petitions influence outcomes and preserve PTAB, District Court, and/or...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

Troutman Pepper Locke

EDVA Upholds USPTO’s Calculation of Patent Term Adjustment

Troutman Pepper Locke on

Under the patent laws, the term of a patent may be increased for delays by the U.S. Patent and Trademark Office (USPTO) during the application process. See 35 U.S.C. § 154(b)(1). Conversely, the USPTO can reduce a patent term...more

Foley & Lardner LLP

USPTO Clarifies Patent-Eligibility Guidelines for AI Inventions

Foley & Lardner LLP on

Recognizing a need for clarity in evaluating patent eligibility under 35 U.S.C. § 101 for critical and emerging technologies, including artificial intelligence (AI) innovations, the U.S. Patent and Trademark Office (USPTO)...more

Womble Bond Dickinson

USPTO Issues Updated Examination Guidance After Federal Circuit Overhauls Test for Design Patent Obviousness

Womble Bond Dickinson on

The United States Patent and Trademark Office (USPTO) has issued a Memorandum to the Corps of Patent Examiners (the “Guidance”), attempting to provide clarity in the wake of the Federal Circuit’s highly anticipated en banc...more

McDonnell Boehnen Hulbert & Berghoff LLP

USPTO Publishes Updated Guidance for Making Proper Obviousness Determinations

On February 27, 2024, the U.S. Patent and Trademark Office published its Updated Guidance for Making a Proper Determination of Obviousness ("Guidance") in the Federal Register.  The stated goal of the Guidance is...more

Goodwin

USPTO Director Issues Precedential Review Decision Regarding Multiple Dependent Claims

Goodwin on

​​​​​​​Director Katherine Vidal of the U.S. Patent and Trademark Office (“USPTO”) issued a precedential review decision with respect to the interpretation of multiple dependent claims, in a case of first impression before the...more

Sheppard Mullin Richter & Hampton LLP

Key Rules and Cases for Patent Practitioners Working on AI Patent Applications

On September 22, 2022, the U.S. Patent and Trademark Office (USPTO) directed patent practitioners to current case law and sections of the Manual of Patent Examining Procedure (MPEP) as reminders as the patent practitioners...more

Holland & Knight LLP

Patent Eligibility Roundup: New Legislation, Call for Comments, Delaying Eligibility

Holland & Knight LLP on

We have a few brief Section 101 updates starting, unsurprisingly, with … Roughly one month after the U.S. Supreme Court rejected the American Axle petition, Sen. Thom Tillis (R-NC) has released the first draft of his Patent...more

Foley & Lardner LLP

Is Motivation To Obtain A Patent Motivation For Obviousness?

Foley & Lardner LLP on

Without naming names or technology, I wanted to share an interesting rationale for obviousness I came across recently. The rejection was an “obvious to try” type rejection, based on the assertion that it would have been...more

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