News & Analysis as of

Patent Applicants

BakerHostetler

Strategies and Considerations for Optimally Using Subject Matter Eligibility Declarations Before the USPTO

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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

Wilson Sonsini Goodrich & Rosati

Failure to Provide Correct Inventors to the USPTO Results in Unenforceable Patents

On November 13, 2025, the U.S. District Court for the District of Massachusetts (court) found that patent applicant, Inline Plastics Corp. (Inline), engaged in inequitable conduct when it failed to disclose two inventors from...more

Patterson Belknap Webb & Tyler LLP

Naughty or Nice? Judge Figueredo Finds Inequitable Conduct in Revival Petition

On November 21, 2025, United States Magistrate Judge Valerie Figueredo recommended that the Court conclude that Plaintiff Sholem Weisner’s conduct in “reviving the ’165 patent constituted inequitable conduct” because, inter...more

Baker Botts L.L.P.

USPTO Publishes New Inventorship Guidance for "AI-Assisted Inventions"

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The U.S. Patent and Trademark Office has issued revised examination guidance on inventorship for AI-assisted inventions, rescinding its February 2024 guidance and replacing it with a clarified legal framework....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

Carlton Fields

USPTO’s Streamlined Claim Set Pilot Program Attempts to Address Long Pendency Facing Applicants

Carlton Fields on

Patent applicants are presently encountering long pendency periods, exceeding two years on the average, before the application is assigned to an examiner and begins its journey through the examination process....more

Fox Rothschild LLP

USPTO Launches 'Streamlined Claim Set Pilot Program' for Expedited Patent Examination

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The United States Patent and Trademark Office (USPTO) has launched a new expedited examination pilot program: the “Streamlined Claim Set Pilot Program.” It is for certain patent applications with no more than one independent...more

Haynes Boone

USPTO Introduces Streamlined Claim Set Pilot Program

Haynes Boone on

On Oct. 27, 2025, the United States Patent and Trademark Office (USPTO) announced it is offering a Streamlined Claim Set Pilot Program (Pilot Program), in an effort to further accelerate examination of currently pending...more

BakerHostetler

[Podcast] Wait, what? IDS Trouble and the PTA Penalty Trap

BakerHostetler on

In this debut episode of Wait, what?, veteran patent attorneys Laura Gordon and Stephanie Lodise unravel the deceptively tricky world of Information Disclosure Statement (IDS) timing. Just because the USPTO says you can file...more

BakerHostetler

[Podcast] Wait, what? IDS Trouble and the PTA Penalty Trap

BakerHostetler on

In this debut episode of Wait, what?, veteran patent attorneys Laura Gordon and Stephanie Lodise unravel the deceptively tricky world of Information Disclosure Statement (IDS) timing. Just because the USPTO says you can file...more

Baker Botts L.L.P.

Third Quarter 2025 Federal Circuit Law Snapshot

Baker Botts L.L.P. on

“While the ultimate question of whether a patent applicant derived a claimed invention from another inventor is one of fact, the determination of whether the accused deriver conceived is a question of law, which is based upon...more

Sheppard Mullin Richter & Hampton LLP

USPTO’s Automated Search Pilot Program: Early Prior Art Insights—Promises and Pitfalls for Patent Applicants

The United States Patent and Trademark Office (USPTO) is rolling out a new Automated Search Pilot Program, offering applicants a first-of-its-kind opportunity to receive a pre-examination, AI-generated prior art search...more

Polsinelli

Patent Drafters Beware: Omitted Provisional Language Can Alter Claim Scope

Polsinelli on

Key Takeaways: The Federal Circuit held that provisional application language omitted from the final patent cannot support broader claim interpretations....more

Volpe Koenig

Working within the USPTO Track 1 Limits

Volpe Koenig on

The U.S. Patent and Trademark Office's (USPTO) Prioritized Patent Examination Program, known as the Track-1 Program, provides an accelerated patent application examination in exchange for additional filing fees to those...more

Smart & Biggar

Canadian Intellectual Property Office “Next Generation Patents” update and status as of August 25, 2025

Smart & Biggar on

On July 17, 2024, the Canadian Intellectual Property Office (CIPO) launched a new electronic system and portal, MyCIPO Patents, as part of its Next Generation Patents initiative. The launch has been fraught with difficulties,...more

Knobbe Martens

U.S. Design “Rocket Docket” Grounded

Knobbe Martens on

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

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

Reissuing a Reissued Patent: Additional Formatting Rules and Pitfalls

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

Baker Botts L.L.P.

Patent Application Prosecution Timeline: What Startup Leaders Need to Know

Baker Botts L.L.P. on

For startup founders and CTOs navigating the patent landscape, understanding the prosecution timeline is essential for strategic planning and resource allocation. After filing your patent application with the USPTO, the...more

Wolf, Greenfield & Sacks, P.C.

Strategic Uses and Considerations for Reissue Applications (Part 3 of 3)

Reissue applications represent a very small fraction of the total number of applications filed at the USPTO each year. Indeed, at the midpoint of 2025, over 1.2 million utility applications have been filed, with less than 300...more

Fitch, Even, Tabin & Flannery LLP

[Webinar] To Fee, or Not to Fee: New USPTO IDS-Related Fees - April 29th, 9:00 am - 10:00 am PDT

The recent 2025 fee setting by the USPTO includes not only fee increases, but the introduction of new fees. One of these new fees is the so-called Information Disclosure Statement (IDS) size fees, which adds a range of fees...more

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

PTAB Year in Review – PTAB Trends in 2024: Challenges to Genus Claims

In the biotechnology and chemical spaces, genus claims are often sought by patent applicants to protect not only a specific product of interest, but also as a means to protect against others making related products that...more

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

New Information Disclosure Statement Fees Apply to Reexamination and Reissue

According to recent U.S. Patent and Trademark Office (Office) data, the Office receives a burdensome number (13%) of information disclosure statements (IDSs) having in excess of 50 total items of information. 89 Fed. Reg....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

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

Expiration of the After Final Consideration Pilot Program 2.0

Based on feedback from the public on the use of After Final Consideration Pilot Program 2.0 (AFCP 2.0) and hesitancy to accept the U.S. Patent and Trademark Office’s proposal for a new fee to participate in AFCP 2.0, the...more

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