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 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
PatentNext Summary: The USPTO has rescinded its February 2024 inventorship guidance for AI-assisted inventions and replaced it with revised guidance issued on November 28, 2025, so prior materials relying on the earlier guidance should be treated as outdated. The revised guidance emphasizes traditional conception-based inventorship, makes clear that AI may assist but cannot be an inventor, and flags a practical priority risk where a foreign filing naming an AI system as the sole inventor can undermine U.S. priority claims. It also underscores that the guidance reflects USPTO examination policy—not binding law—so courts (or Congress) may ultimately provide the controlling rules.
Continue Reading The USPTO’s Revised Guidance regarding AI-Assisted Inventions
PatentNext Summary: An Information Disclosure Statement (IDS) is the primary procedural vehicle for satisfying the duty of candor and good faith owed to the USPTO during patent prosecution. The consequences of failing to disclose material information can be severe, including a later finding of inequitable conduct and resulting unenforceability of an issued patent. This article summarizes the legal framework governing materiality, the scope of the disclosure duty, foreign and parallel-application considerations, and practical IDS best practices for attorneys seeking to reduce risk while building a strong prosecution record.
Continue Reading The Pitfalls of Failure to Disclose Material Information to the USPTO and Information Disclosure Statement (IDS) Best Practices
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
On August 4, 2025, the USPTO issued a memo to patent examiners with the subject “Reminders on evaluating subject matter eligibility of claims under 35 U.S.C. 101.” [1]
Much has been made of these reminders and what they might signal in terms of a possible shift in how the Office treats rejections under § 101
On October 8, 2025, the Office announced the “Automated Search Pilot Program,” a new initiative that will use an internal AI tool to conduct a prior art search before an application undergoes substantive examination. The pilot program slated to begin on October 20, 2025 offers applicants a unique, early look at an AI-generated