On April 1, 2026, USPTO Director Squires issued an Official Gazette Notice allowing patent owners a limited amount of time to respond to a request for ex parte reexamination (EPR) before the Office determines whether the request presents a substantial new question of patentability (SNQ). Under this new procedure, within 30 days of being served … Continue Reading
On March 11, 2026, USPTO Director Squires issued a memorandum that sets forth additional criteria for IPR and PGR petitioners and patent owners to consider in arguing whether petitions should be granted. Two of the new criteria focus on ties of patented technology to the United States. A third criterion considers the size of a … Continue Reading
As the 2026 Winter Olympics captivate audiences, one sport in particular―curling―stands out as the perfect metaphor for the challenge of prosecuting AI inventions before the US Patent and Trademark Office (USPTO). Both arenas demand foresight, adaptability, and strategic thinking, whether it’s guiding a stone across the ice or shepherding an AI patent application through evolving … Continue Reading
Readers will recall that the Deputy Commissioner for Patents issued a memorandum on evaluating patent claims for subject matter eligibility in August, which we blogged about previously. The August 2025 Memorandum noted that a patent application “does not need to explicitly set forth the improvement [to the functioning of a computer or to another technology … Continue Reading
As readers may recall, in February 2024, the USPTO issued guidance on inventorship in AI-assisted inventions, which we wrote about here. On November 26, 2025, the USPTO rescinded that guidance and replaced it with new guidance. By way of background, the February 2024 Guidance analyzed the naming of inventors for AI-assisted inventions using the Pannu … Continue Reading
There have been hundreds of summary discretionary denial decisions from the Acting Director regarding inter partes review and post-grant review. We blogged on these decisions here, here, here, here, and here. On October 17, 2025, newly appointed Director Squires issued an open letter and memorandum to the public and to the Patent Trial and Appeal … Continue Reading
On August 4, the Deputy Commissioner of Patents issued a memorandum to Examiners on evaluation of claims in software-implemented inventions for subject matter eligibility under Section 101. While the memorandum does not fundamentally change the USPTO’s guidance published in the MPEP, the memorandum does provide useful clues as to how the USPTO and the Examining … Continue Reading
Since the iRhythm IPRs on which we blogged recently, there have been two more (actually, many more) decisions that are leaving petitioners scratching their heads. In Dabico, the Acting USPTO Director discretionarily denied an IPR petition because of “settled expectations,” the same rationale as in iRhythm. The Acting Director went further and criticized the petitioner … Continue Reading
In a set of astonishing identical Director Review decisions, the Acting USPTO Director discretionarily denied five IPR petitions whose proceedings would have concluded over seven months before the underlying patent infringement suit would have gone to trial. The Acting Director reasoned that the petitioner waited too long to file its IPR petitions because, even though … Continue Reading
The patent statute 35 U.S.C. § 325(d) allows the USPTO Director to deny institution of an IPR when “the same or substantially the same prior art or arguments previously were presented to the Office.” In IPR practice, relying on prior art that already had been before the PTO is perfectly acceptable. Under the 2020 decision in … Continue Reading
In an effort to offer customers better service, the United States Patent and Trademark Office has been modernizing various aspects of their operations. One result of the modernization and efficiency efforts relates to expedited patent issue dates. On April 15th, the Patent Office announced that ― starting on May 13th, 2025 ― it will be … Continue Reading
As provided by statute at 35 U.S.C. § 311(b), a petitioner in an inter partes review (IPR) may challenge the claims of a patent “only on the basis of prior art consisting of patents or printed publications.” Does this provision permit IPR challenges based on Applicant Admitted Prior Art (AAPA) ― art identified in the … Continue Reading
In Part I of this set of blogs, we discussed the impact of the rescission of former USPTO Director Vidal’s Guidance Memorandum for handling discretionary denials in inter partes review proceedings before the Patent Trial and Appeal Board. We also discussed Chief Judge Boalick’s Guidance Memorandum on the rescission. In Part II, we examine a … Continue Reading
Recent actions from the USPTO have engendered a great deal of discussion among the bar practicing before the Patent Trial and Appeal Board. On February 28, 2025, acting Director Stewart rescinded former Director Vidal’s Guidance Memorandum for handling discretionary denials in inter partes review proceedings before the Board. On March 24, 2025, Chief Judge Boalick … Continue Reading
In a November 6, 2024 opinion in Certain Computing Devices Utilizing Indexed Search Systems and Components Thereof, the U.S. International Trade Commission (“ITC”) held that statements, disclaimers, and positions taken during the prosecution of a later patent apply to the construction and interpretation of the same term in an earlier related patent. Using this standard, … Continue Reading
Earlier this year, as we discussed here, here, and here, the United States Patent and Trademark Office (USPTO or Office) proposed a number of sweeping changes to the Office’s patent fees, including a very steep set of fees for filing terminal disclaimers, later continuation applications, and three or more requests for continued examination (RCEs). The … Continue Reading
When a patent application is allowed, the claims may not precisely cover everything that the applicant wants to protect. Rather than add new claims after a notice of allowance and prolong prosecution, applicants will commonly file one or more continuation applications to pursue different claims. The continuation has substantially the same specification and drawings as … Continue Reading
As noted in Part I of this series, patent litigation can be a mechanism for parties to spar and evaluate patent rights, as well as each other, prior to making the business agreements that settle such disputes. Once a patent is asserted to be infringed with the filing of a lawsuit, the dispute can become … Continue Reading
In a May 10, 2024, Notice of Proposed Rulemaking (NPRM), the USPTO proposed sweeping changes in the rules governing the filing of terminal disclaimers. If the USPTO implements the proposed changes, entire patent families could be wiped out if just one claim of one patent in the family is found invalid over prior art. Patent … Continue Reading
Much like word processing with spell check and other now commonplace digital tools were once only the stuff of science fiction, artificial intelligence (AI) is quickly becoming widespread in knowledge work including law practice. IP law is no exception. The use of AI in IP law practice has practical benefits, including the potential for enhanced … Continue Reading
As discussed in two of our recent blogs (here) and here), the United States Patent and Trademark Office (USPTO or Office) recently proposed substantial patent fee increases for continuing applications and terminal disclaimers. The USPTO is also proposing substantial increases for an applicant to request continued examination of an application whose claims have been rejected, … Continue Reading
As discussed in our previous blog (here), the United States Patent and Trademark Office’s (USPTO) has proposed substantial surcharges for filing continuing applications, depending on the timing of filing. The USPTO is also proposing substantial increases for an applicant to file a terminal disclaimer. As we discuss below, these increases are likely to affect strategies … Continue Reading
The United States Patent and Trademark Office’s (USPTO) recently proposed patent fee increases could have far-ranging consequences for applicants looking to build a patent family from a single patent application. In this first of a series of blogs, we will discuss the potential consequences of the USPTO’s proposed fee increases for continuing applications, including continuation, … Continue Reading
On March 18, 2024, the United States Patent and Trademark Office (USPTO) issued a Memorandum containing guidance to help patent examiners analyze claim language that may be interpreted as “means-plus-function” or “step-plus-function” language under 35 U.S.C. § 112(f). The USPTO said that the Memorandum was not a change in practice for examiners. Sometimes, however, how something … Continue Reading
