USPTO Reminds Applicants and Examiners That Declaration Practice Exists for Rejections Under Section 101

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 or technical field], but it must describe the invention such that the improvement would be apparent to one of ordinary skill in the art.”

In responding to rejections under Section 101 for ineligible subject matter, it is often useful to be able to argue that the Specification describes a technical solution to a technical problem that constitutes an improvement to the functioning of a computer or to another technology or technical field. In instances in which the specification does not explicitly set forth an improvement to the functioning of a computer or to another technology or technical field, and such an argument is not explicitly supported by the Specification, 37 C.F.R. 1.132 provides an avenue to provide additional evidence to establish the eligibility of claims under Section 101.

AI Heists Santa’s Secrets: Elfred’s High-Tech Plot to Hijack Christmas

By Christopher Adams, Anna Fraser and Victoria Smith on December 8, 2025 Posted in Artificial Intelligence, Cybersecurity, Intellectual Property, Technology, Trade Secrets, US

It’s the most wonderful time of the year—unless you’re Santa and your trade secrets just got swiped by a disgruntled elf with no holiday cheer, wielding powerful magical artificial intelligence (AI) tools like “ElfGPT.” As snow falls over the North Pole and elves frantically race to meet their Christmas Eve deadline, a new kind of holiday heist is afoot. Forget naughty or nice—this year, Santa’s checking his IP address logs twice, thanks to a not-so-jolly new threat at the North Pole: AI-powered trade secret theft. With digital elves on the loose, even Santa’s sleigh bells can’t drown out the sound of cyber mischief.

New Inventorship Guidance on AI-Assisted Inventions: AI Can’t Be an Inventor, But AI Can Be a Tool in the Inventive Process (For Now…)

By Michael Lew and Danni Sun on December 1, 2025 Posted in Artificial Intelligence, Patents, Technology, USPTO

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 factors, which state that an inventor must (1) contribute in some significant manner to the conception or reduction to practice of an invention, (2) make a contribution to the claimed invention that is not insignificant in quality when measured against the full invention, and (3) do more than merely explain well-known concepts and/or the current state of the art. In the February 2024 Guidance, the USPTO noted that in the context of AI-assisted inventions, the Pannu factors were informed by the following considerations:

Implementation of New UK Subscription Contract Regime Delayed

By Carlton Daniel and Paul Jinks on December 1, 2025 Posted in Consumer Law, Subscriptions, UK

The authors wish to thank Sirrul Choudhury for his contributions to this post.

On 20 November 2025 the UK government confirmed that the secondary legislation which is required to clarify and bring into force the new consumer subscription contract regime under the Digital Markets, Competition and Consumers Act 2024 (DMCCA) [A New Era for Consumer Law and Regulation | Global IP & Technology Law Blog] will be delayed until autumn 2026 at the earliest. This marks a shift from the government’s earlier position that the new regime (which will impose new specific requirements on businesses offering consumers subscription contracts designed to ensure consumers understand what they are signing up to and can easily cancel) would come into force in spring 2026.

Getty Images (US) Inc (and others) v Stability AI Limited. Input: Getty Images v Stability AI. Output: Continued Uncertainty.

By Carlton Daniel and Paul Jinks on November 25, 2025 Posted in Artificial Intelligence, Copyright, Intellectual Property, Judiciary, Technology, Trade Mark, Trademark Infringement, UK

On 4 November 2025 the UK High Court handed down its judgment in the case of Getty Images (US) Inc (and others) v Stability AI Limited [2025] EWHC 2863 (Ch) [High Court Judgment Template].

The case concerned the training, development and deployment of Stability AI’s “Stable Diffusion” generative AI model and, as one of the first and to date most high-profile intellectual property (IP) infringement claims against an AI developer to make it all the way to trial in the UK courts, was originally envisaged as having potential to provide much-needed wide-ranging judicial guidance on the application of existing UK IP law in the field of AI. However, as the case progressed and the scope of Getty’s claims gradually reduced to a shadow of the original, it became apparent that this judgment, whilst still of note in respect of a number of key issues, would not be the silver bullet which many had originally anticipated.

At over 200 pages the judgment is long and complex, including detailed discussion of the witness and expert evidence which the Court considered before reaching its findings.

Two Nonnas, One Secret Sauce: Who Stirred the Pot, Who Spilled the Beans, And How to Protect Your Trade Secrets from Walking Out with the Leftovers (Sorry, Cousin Tony!)

By Christopher Adams, Anna Fraser and Victoria Smith on November 18, 2025 Posted in Intellectual Property, Trade Secrets

Setting the Stage:

It’s a sunlit Sunday afternoon in New York City. The house hums with laughter and the joyful chaos of family—children darting through hallways, voices mingling. In the heart of it all, two cherished sisters, Nonnas, Rosa and Maria, are in the kitchen, stirring pots and sharing family secrets as they prepare their legendary pasta sauce. The aroma is so intoxicating that even the neighbors might be tempted to sign a non-disclosure agreement (NDA). Nonna Rosa brandishes her wooden spoon like a gavel, proclaiming, “Maria, you can’t just share our family recipe like it’s candy at Halloween! This is how family legacies crumble!” Maria counters, “For fifty years, I’ve safeguarded this recipe with two things: my trusty spoon and a glare that could curdle milk from across the room.” But there’s a bigger challenge lurking in the kitchen, one that neither Nonna anticipates: their grandkids, those seemingly innocent helpers who can wreak havoc on the family secret.

The USPTO Director De-Delegates – But What About the Rules?

By Frank Bernstein on October 21, 2025 Posted in Intellectual Property, IP Litigation, ITC Section 337, Patent Litigation, Patents, US, USPTO

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 Board (Board), taking back authority previously delegated to the Board to decide whether to institute an IPR or PGR proceeding on the merits. Now, the Director will issue summary notices on whether to institute proceedings.

The Director appears to be engaging in rulemaking without notice to the public and an opportunity to comment. While the Director cited 35 U.S.C. § 3(b)(3)(B) as giving the Director authority to delegate responsibilities under the America Invents Act (AIA), there are numerous rules, enacted after public notice and comment, which delegate institution responsibilities to the Board, and involve the Director only after action by the Board. (Curiously, on the same day, the Director issued a Notice of Proposed Rulemaking, to limit discretion of the Board to institute inter partes review, seeking public comment.)

The Director’s October 17 actions represent a potentially highly significant curtailment of IPR and PGR practice. Potential IPR petitioners will have a lot to think about.

Ofcom Confirms Participants for Upcoming mmWave Spectrum Auction

By Francesco Liberatore on October 14, 2025 Posted in Cybersecurity, Europe, Technology, Telecoms, UK

The UK telecoms regulator Ofcom has officially confirmed the mobile network operators that will participate in the highly anticipated millimetre wave (mmWave) spectrum auction. The auction, which will release valuable spectrum in the 26 GHz and 40 GHz bands, is a key step in advancing the UK’s 5G infrastructure, particularly in densely populated urban areas.

Confirmed Participants

Three major telecom players have been approved to take part in the auction:

British Telecommunications Public Limited Company (EE)
Telefonica UK Limited (on behalf of Virgin Media O2)
Vodafone Limited (on behalf of VodafoneThree)

These companies represent the backbone of the UK’s mobile connectivity landscape and are expected to compete for 68 high-density area licences. These licences will be crucial for deploying ultra-fast 5G services in cities such as London, Manchester, Glasgow, Cardiff, and Belfast.

What’s at Stake?

What Patent or Trade Secret Chemistry is Right for You?

By Todd Ostomel and Christopher Adams on August 19, 2025 Posted in Intellectual Property, Patents, Trade Secrets

You couldn’t sleep. You recently worked through the night on your bench experiments, even when the security guard told you to go home, painstakingly perfecting the process to align with your company’s plans for a chemical manufacturer to scale your product. As the morning light peeked across your lab bench, your overcaffeinated fingers clicked the analytical results tab. You could hardly believe the results. Your new process (“New Process”) required half the solvent, the reaction occurred at twenty degrees cooler, and only slightly elevated pressure. But it worked! You just synthesized your lead chemical candidate at half the cost compared to when you founded this company.

Commercializing inventions requires not only capital but also an emotional investment by the inventors. Visionaries like yourself, who dream about an improved tomorrow, typically pay for that ambition with insomnia, time away from family, job insecurity, and opportunity costs. Founders, and the investors backing them, want insurance that some less-deserving company will not copy, or worse steal, the fruits of your sweat-filled labor. Intellectual property is a type of insurance against others copying or stealing. It provides a risk mitigation strategy. But just as one’s insurance needs mature and evolve over time with the acquisition of assets and liabilities, so too should one’s intellectual property portfolio evolve as one acquires or improves upon their proprietary technology. When is patent protection enough, and when is trade secret protection a better option?

Patent Office Memo to Examiners Gives Insight For Patenting Software Inventions

By Michael Lew on August 10, 2025 Posted in Artificial Intelligence, IP Litigation, Patents, Technology, US, USPTO

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 Corps will be evaluating claims for subject matter eligibility going forward.

In discussing Step 2A, Prong One of the Alice/Mayo test, the memorandum focuses on the “mental process grouping” of abstract ideas and distinguishing claims that merely involve a judicial exception (and are patent eligible) from claims that recite a judicial exception (which require further analysis). The memorandum reminds Examiners to not expand the mental process grouping to encompass claim limitations that cannot be practically performed in the human mind. Notably, for AI-related innovation, the memorandum explicitly states that “[c]laim limitations that encompass AI in a way that cannot be practically performed in the human mind do not fall within this grouping.”