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
The United States Patent and Trademark Office (USPTO) has issued an advance notice of change to the Manual of Patent Examining Procedure (MPEP) to incorporate Ex Parte Desjardins, Appeal No. 2024-000567 (PTAB September 26,...more
The U.S. Patent and Trademark Office (USPTO) recently issued three memoranda focused on subject matter eligibility under 35 U.S.C. § 101. Together, these memos: (1) formalize the role of Subject Matter Eligibility...more
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
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
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
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
The U.S. Patent and Trademark Office (USPTO) implemented a change earlier this month that may limit the availability of Examiner interviews going forward. Under the new USPTO internal protocol, Examiners will be...more
Reissue applications are often filed to pursue claim scope different from the original patent. For utility applications, this may mean revising or adding claims. But what about design patents? Design patents have only a...more
Supplemental Examination (SE)—established by 35 U.S.C. § 257 of the America Invents Act—provides patent owner a mechanism to request the Patent Office (the “Office”) consider, reconsider, or correct information believed to be...more
The U.S. Patent Office’s program for expedited examination of design applications under 37 CFR 1.155 (often called the design “rocket docket”), which was suspended earlier this year, was formally canceled in an amended...more
Over the past couple of years we have discussed the important role a broadening or narrowing reissue can play in proper portfolio development and resuscitation of a patent or patent family after invalidation in court or the...more
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
Knowing what qualifies as prior art is a core requirement of patent practitioners—whether in life sciences, in the technology sectors or in post-grant proceedings. It is important to keep abreast of changes to the rules,...more
As we near the end of February, it’s a great time to talk about something that might seem straightforward—USPTO response deadlines—but can actually be a little sneaky. Why? Because February insists on being the shortest month...more
Want to learn more about drafting, negotiating, and understanding intellectual property and technology contracts and have 10 minutes to spare? Grab your morning coffee or afternoon tea and dig into our Tech Contract Quick...more
The rapid increase in innovation and popularity surrounding AI, its capabilities and seemingly endless applications has created a technological revolution, the magnitude of which hasn’t been seen for decades. This has led to...more
The 2024 Guidance Update on patent subject matter eligibility applicable to AI inventions, which will be incorporated into the MPEP “in due course,” is scheduled to be published in the Federal Register on July 17, 2024. ...more
In a stunning Federal Register Notice published May 10, 2024, the U.S. Patent and Trademark Office (USPTO) proposes to impose a new requirement on terminal disclaimers filed to overcome obviousness-type double patenting...more
If you get to page 1060 of the Consolidated Appropriations Act of 2023, you will see the Unleashing American Innovators Act of 2022, which was enacted on December 29, 2022. Part of that law changed the formula for calculating...more
In an unusual Federal Register Notice, the USPTO “reminded” applicants that “patent applications must properly present examples in a manner that clearly distinguishes between prophetic examples that describe predicted...more
As discussed in our prior piece on Patent Law, the United States patent system is built on a “carefully crafted bargain” between inventors and the public. Issuance of a patent allows the owner of that patent to prevent others...more
The United States Patent and Trademark Office (USPTO) published the latest revision to its Manual of Patent Examining Procedure (MPEP) on June 30, 2020. According to the Executive Summary, in this revision, nearly all of the...more
Under the U.S. Patent Act, one can patent “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” Common exceptions to what can be patented include laws of...more
Decisions by the Supreme Court and the Federal Circuit over the past decade have wrestled with the question that 35 U.S.C. §101 was intended to answer: What is eligible for patent protection? The text of §101 says a patent...more