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PatentNext Summary: The USPTO has rescinded its February 2024 inventorship guidance for AI-assisted inventions and replaced it with revised guidance issued on November 28, 2025, so prior materials relying on the earlier guidance should be treated as outdated.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
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