USPTO Proposes Dramatic Restrictions for Inter Partes Review Institution
On October 17, 2025, the United States Patent and Trademark Office (USPTO) published a notice of proposed rulemaking (NPRM) that, if accepted, would dramatically change the criteria for Inter Partes Review (IPR) institution before the Patent Trial and Appeal Board (PTAB). The NPRM proposes several new rules that would restrict the institution of IPR's in many instances. Comments on the proposed rules must be submitted by November 17, 2025. Separately, but on the same day, the USPTO director, John A. Squires, announced that he would assume authority over making all IPR and Post-Grant Review (PGR) institution decisions, an authority that has been delegated to the PTAB since the inception of IPRs.
Pending, Unexamined Utility Applications have a Short-Lived Opportunity to Jump the Line
In an effort to evaluate the impact of a limited claim set on pendency and examination quality, the USPTO launched the Streamlined Claim Set Pilot Program on October 27, 2025. Under the pilot, eligible applications accepted into the pilot will be advanced out of turn for examination until a first Office Action is issued. The program will run until October 27, 2026, or until each Technology Center dockets approximately 200 applications under the pilot.
ASAP!: A Limited Opportunity to Participate in New USPTO AI Search Pilot
The USPTO announced the launch of Artificial Intelligence Search Automated Pilot (ASAP!) that began on October 20, 2025. With a stated goal of testing the efficacy of the USPTO's new Artificial Intelligence (AI) tools, the USPTO is providing an opportunity for an automated AI search to be conducted and Automated Search Results Notice (ASRN) to be provided to applicants who petition to participate in the program. The stated goal of the pilot is to ascertain the impact of sharing the ASRN (pre-examination) on prosecution by applicants, evaluate the scalability of generating ASRNs, and collect data to inform the USPTO's next steps, such as through a survey of participants as to the usefulness of the ASRN in assessing patentability early in the examination process.
Federal Circuit Issues Simple Ruling on Patent Eligibility That Appears to Contradict Previous Decisions
Patent eligibility, as defined by 35 U.S.C. § 101, includes new and useful processes, machines, manufactures, and compositions of matter. Various Supreme Court decisions have sought to define the scope of this statute, most notably in Alice Corp. v. CLS Bank Int'l, which provided the current two-step framework for determining patent eligibility. The first step involves determining if the claimed subject matter is directed towards a judicial exception, such as an abstract idea, and the second step involves determining if the claims recite significantly more than the judicial exception. The Alice framework has been used in many court cases over the past decade, including a controversial decision issued in August of this year by the United States Court of Appeals for the Federal Circuit (CAFC).
How to Handle "Close Calls" on § 101: USPTO Provides Reminders for Patent Examiners on Evaluating Subject Matter Eligibility
On August 4, 2025, the Deputy Commissioner of Patents, Charles Kim, sent a memorandum (hereinafter "August 4 Memo") to the examining corps regarding the USPTO's subject matter eligibility guidance. The August 4 Memo includes several important reminders pertaining to examining software-related inventions as articulated in the Manual of Patent Examining Procedure (MPEP) and other USPTO guidance. In particular, the August 4 Memo provides guidance on the following topics that arise when examiners assess Step 2A of the USPTO's subject matter eligibility analysis: (a) reliance on the mental process grouping of abstract ideas; (b) distinguishing claims that "recite" a judicial exception from claims that merely "involve" a judicial exception; (c) analysis of the claim as a whole; and (d) consideration of whether a claim is directed to an improvement in the functioning of a computer or "any other technology or technical field," or whether a computer is merely being used as a tool to perform the recited abstract idea (i.e., "apply it"). In addition, the August 4 Memo includes a discussion of when a subject matter eligibility rejection should be made.
Patent Rights Retained For "First-To-File" Inventor in First Review of AIA Derivation Proceeding
On August 26, 2025, the U.S. Court of Appeals for the Federal Circuit (Federal Circuit) affirmed a ruling made by the Patent Trial and Appeal Board ("Board") against a first-inventor, second-filer claim in its first review of a derivation proceeding.
USPTO Clarifies Boundaries of IPR Petitions in Response to Federal Circuit's Shockwave Decision
The United States Court of Appeals for the Federal Circuit clarified in Shockwave Medical, Inc. v. Cardiovascular Sys., Inc. how Applicant Admitted Prior Art (AAPA) fits into inter partes review (IPR) practice. In response, the United States Patent and Trademark Office issued a memorandum that narrows the use of AAPA in IPR petitions. The USPTO explained that while AAPA can still be used in a limited way for background information and to show motivation to combine references, it can no longer be used to supply a claim limitation missing from the prior art patents and printed publications raised by the petitioner.
Federal Circuit Limits Overlapping-Range Presumption in Multi-Dose Regimen Claims
While there is a presumption of obviousness that typically applies when claimed and prior-art ranges overlap, the U.S. Court of Appeals for the Federal Circuit recently held that the presumption did not apply to claims covering an integrated multi-dose regimen with a specific dose sequence. In particular, the court found that the presumption was inapplicable because the prior art did not teach the claimed combination of doses in sequence.
Inventors' Intended Claim Scope is Irrelevant in Determination of Broadening in Reissue Applications
The U.S. Court of Appeals for the Federal Circuit recently affirmed a decision of the Patent Trial and Appeal Board sustaining the examiner's rejection of a claim of a reissue application under 35 U.S.C. § 251 because the reissue claim broadened the scope of the original patent. The court held that when considering whether a claim presented in a reissue application broadens the scope of the original patent under 35 U.S.C. § 251(d), one must look to the "actual scope of the claim-at-issue, not the subjective intended scope of the inventors."
Understanding Fair Use in the Age of Generative AI: The U.S. Copyright Office's Perspective
The rise of generative artificial intelligence (AI) has sparked a pivotal legal debate that now stands on the edge of a major turning point. At the heart of the issue is a fundamental question: can the use of copyrighted works to train generative AI models be considered fair use, or does it constitute infringement? For years, developers have trained these models on vast datasets that include copyrighted materials, largely under the assumption that such use falls within fair use doctrine. Moreover, many have argued that impeding free access to these materials would be catastrophic to technological progress and place the U.S. at a disadvantage on the global stage. Copyright holders and creators, on the other hand, have voiced their concern that their own works are being used without their permission to produce content with which they must compete, placing their livelihoods at risk.
