PatentNext Takeaway: An improvement in the functioning of a computer, or an improvement to other technology or technical field, can provide an overlooked response to a software patent eligibility rejection. MPEP § 2106.04(d)(1) supplies two instructions: (1) the claim need not expressly announce the improvement, provided its limitations reflect the features producing it; and
PatentNext Takeaway: The Federal Circuit’s decision in Dental Monitoring SAS v. Align Technology, Inc., No. 2024-2270 (Fed. Cir. July 7, 2026), provides another important warning for patent applicants seeking protection for artificial intelligence (AI) and machine-learning technologies. Applying a generic AI or “deep learning” system to a specialized medical or dental problem—even where the
PatentNext Takeaway: Generative artificial intelligence patenting has entered a new phase. According to the World Intellectual Property Organization (WIPO), more GenAI patent families were published during 2024 and 2025 than during the entire preceding decade. GenAI patenting is also expanding beyond traditional technology companies into finance, telecommunications, infrastructure, and other industries. For businesses developing or
PatentNext Takeaway: In Applications in Internet Time, LLC v. Salesforce, Inc., the Federal Circuit provided a useful reminder for drafting AI-related patent claims: dependent claims can help preserve broader independent-claim scope where the dependent claims separately recite narrower AI or agent-based implementations.
Although Applications in Internet Time was not a generative AI case, its
PatentNext Takeaway: On April 30, 2026, the USPTO issued a memorandum titled “Best Practices for Submission of Rule 132 Subject Matter Eligibility Declarations (SMEDs),” updating the Office’s December 4, 2025 guidance to applicants and practitioners. The new memorandum reinforces the Office’s SMED framework and characterizes it as a living body of guidance informed by practitioner experience.
The result is not a change in law or procedure, but a signal: the USPTO views SMEDs as an increasingly important evidentiary tool for resolving § 101 issues in emerging and fact‑intensive technologies, particularly artificial intelligence and diagnostics.
Continue Reading USPTO Updates SMED Best Practices
PatentNext Takeway: Ex parte Desjardins—and especially the USPTO’s decision to make it precedential—appears to be shifting examination away from § 101 and toward § 112 written-description scrutiny, particularly for AI-related inventions. For AI-related inventions, a central takeaway is that practitioners should expect more examiner demands for concrete disclosure of how an AI model is trained, what inputs and outputs are used, how preprocessing and post-processing occur, and how inference or agentic workflows actually operate. Prosecution data and a recent office action example also suggest that written-description rejections are increasing both overall and in AI applications. The practical implication is that patent applicants should not rely on high-level “black box” AI descriptions, but instead should draft specifications with enough technical detail to demonstrate possession of the claimed invention.
Continue Reading USPTO Examiners issue more Written Description (Section 112) rejections following Precedential Ex Parte Desjardins decision
Following the USPTO’s high-profile actions in Desjardins, the next question was how that guidance would play out in ordinary PTAB appeals. Ex parte Carmody provides an early answer.
The decision itself is short. The analysis is sparse. And that is precisely why it matters.
Continue Reading Ex parte Carmody: A Quiet but Important Signal on AI Eligibility Under §101
On December 4, 2025, the United States Patent and Trademark Office (USPTO) issued two memoranda addressing the use of Subject Matter Eligibility Declarations (“SMEDs”) during patent prosecution, both from Director John Squires. The first, the SMED Examiner Memo, targets the Patent Examining Corps, clarifying how examiners should treat applicant-submitted evidence under 37 CFR 1.132 in traversing subject matter eligibility (SME) rejections. The second, the Best Practices for SMEDs Memo, addresses the legal community, emphasizing strategies for maximizing the value and probative weight of SMEDs. This article summarizes both memos, offering practical insights for innovators, patent professionals, and stakeholders navigating the Section 101 landscape.
Continue Reading USPTO Issues Guidance on Subject Matter Eligibility Declarations (“SMED”)
In our earlier posts, we discussed the significance of Ex Parte Desjardins: first when the Appeals Review Panel vacated the § 101 rejection, and again when Director Squires designated the decision as precedential.
Today, the USPTO has taken the next step: it has formally issued a memo to the examining corps announcing updates to the MPEP that incorporate Desjardins directly into the Office’s subject-matter eligibility framework.
Continue Reading Further Update: USPTO Issues Memo Integrating Desjardins Into the MPEP
PatentNext Summary: Announcing the IPO’s AI Patenting Handbook V3.0, which is a newly updated third edition of IPO’s practical guide for attorneys working with AI-related inventions and technologies. It offers a clear framework for understanding modern AI (including foundation models and generative AI), drafting and prosecuting stronger AI patent applications, and navigating enforcement, global practice, and emerging AI inventorship and governance issues—designed as a day-to-day reference for in-house and outside counsel.
Continue Reading Artificial Intelligence (AI) Patenting Handbook: Version 3.0