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
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
When we first covered Ex parte Desjardins, we noted that the decision, which was issued just days after Director John Squires took office, could mark the beginning of a new era for AI and software patent eligibility at the USPTO. That prediction now appears well-founded. On November 4, 2025, Director Squires designated the Desjardins decision as precedential, ensuring that its reasoning now binds all patent examiners and the Patent Trial and Appeal Board (PTAB).Continue Reading Update: Desjardins Decision Made Precedential
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
PatentNext Summary: The Desjardins decision, co-authored by new USPTO Director John Squires, signals a potential shift toward greater patent eligibility for AI and software innovations. By vacating a § 101 rejection and warning that “categorically excluding AI innovations from patent protection in the United States jeopardizes America’s leadership in this critical emerging technology,” the Appeals Review Panel (ARP) emphasized that eligibility should not be used as a catch-all to reject claims better addressed under §§ 102, 103, and 112. For practitioners, the decision highlights the importance of describing concrete technical improvements in the specification, tying those improvements directly to the claim language, and framing claims as technological solutions rather than abstract ideas. This marks a potentially significant recalibration of the USPTO’s approach to AI-related claims under Director Squires’ leadership.Continue Reading Artificial Intelligence Patent Claims Get a Boost: USPTO Director Vacates §101 Rejection in Desjardins
PatentNext Summary: The USPTO issued “Reminders” for examiners in Tech Centers 2100/2600/3600 addressing §101 eligibility for software and Artificial Intelligence(AI) / Machine Learning (ML)-related inventions; while not changing the MPEP, the guidance is meant to sharpen examination practice. It clarifies Step 2A, Prong One by limiting “mental process” to what can be practically performed in the human mind—stating that AI claim limitations not performable mentally are not “mental processes”—and by distinguishing claims that merely involve a judicial exception (e.g., Example 39) from those that recite one (e.g., Example 47). For Step 2A, Prong Two, examiners must evaluate the claim as a whole to identify a practical application, giving weight to meaningful additional limitations and to improvements in computer capabilities or a technical field, even if the improvement is only implicit in the specification. The Reminders caution against oversimplified “apply it” rejections, require a preponderance of evidence for “close call” §101 rejections, and reinforce compact prosecution that fully addresses §§102/103/112 for every claim in the first action.Continue Reading USPTO Issues “Reminders” Supporting AI and Software Patenting and instructing Patent Examiners on the Limits of Section 101 Patent Eligibility
Agentic AI is transforming artificial intelligence by enabling systems to act independently, making decisions and solving problems autonomously across various industries. Its potential rapid development poses unique challenges for intellectual property protection, requiring innovative strategies to ensure these advancements are effectively safeguarded within the evolving IP landscape.Continue Reading Agentic AI: Transforming Industries and Navigating the Patent Frontier