The United States Patent and Trademark Office is undergoing its most dramatic policy transformation in years, creating both opportunities and uncertainties for patent owners. With new leadership has come sweeping changes to how patents are examined, challenged, and protected—particularly in Inter Partes Review proceedings and patent eligibility determinations under 35 U.S.C. § 101.
For businesses holding patents or considering patent protection, understanding these shifts is critical to protecting valuable intellectual property assets.
The Changing Face of USPTO Leadership
The USPTO director position has historically been a political appointment, with each administration bringing different priorities and philosophies to patent policy. Recent years have seen particularly dramatic swings in approach, especially regarding how aggressively the office defends patent validity versus allowing challenges.
Under previous leadership, the Patent Trial and Appeal Board maintained relatively high rates of instituting Inter Partes Reviews—proceedings that allow third parties to challenge issued patents. This created an environment where patent owners faced repeated challenges to their rights, sometimes from the same entities using different prior art references.
The current administration has taken a markedly different approach, prioritizing patent owner protections and American innovation in emerging technologies.
Inter Partes Review: From Challenge Highway to Patent Owner Protection
Perhaps the most striking change involves IPR proceedings. These post-grant challenges were created by the America Invents Act to provide an alternative to district court litigation for resolving patent validity questions. However, critics argued the system became a tool for well-funded entities to repeatedly attack patents, particularly given the historically high institution rates.
Recent policy changes have dramatically reversed this trend through several mechanisms:
Director-Level Review of Institution Decisions
The current USPTO director now reviews all IPR institution decisions rather than delegating them to PTAB judges. This centralized review has resulted in significantly lower institution rates—a complete reversal from the approximate 67% historical institution rate. Recent data shows institution rates have dropped to around 4%, with dozens of petitions receiving discretionary denials.
Expanded Grounds for Discretionary Denial
New proposed rules would create mandatory bars to institution in three key categories:
- Patents previously found valid in other proceedings (including district courts, ITC proceedings, previous IPRs, or reexaminations)
- Parallel litigation likely to reach a validity decision first
- Petitioners who refuse to stipulate against raising the same challenges in other venues
These changes aim to prevent the “serial challenge” problem where patent owners faced repeated attacks on patents that had already been validated through other proceedings.
The “Settled Expectations” Doctrine
A newer development involves considering whether patents nearing expiration should be subject to IPR challenges. The rationale holds that patent owners develop settled expectations that their mature patents won’t face new validity challenges late in their term, particularly for patents that have already been defended successfully in other proceedings.
What These IPR Changes Mean for Patent Owners
For patent holders, these shifts represent a significant strengthening of patent rights:
- Reduced exposure to repeat challenges: Patents validated in one forum gain protection from subsequent IPR attacks
- Lower defense costs: Fewer instituted proceedings mean reduced legal expenses defending patent validity
- Increased patent value: Stronger protection from challenges enhances patent portfolio value
- Strategic advantages in licensing and enforcement: Greater certainty in patent validity improves negotiating positions
However, these changes also create uncertainty. The dramatic policy reversals demonstrate that USPTO approaches can shift substantially with administration changes, making long-term strategic planning more challenging.
Patent Eligibility Under Section 101: A Pendulum Swing
Beyond IPR proceedings, significant changes are occurring in how the USPTO examines patent eligibility under 35 U.S.C. § 101—the statute defining what types of inventions can be patented.
For years, patent practitioners struggled with increasingly restrictive interpretations that deemed many innovations—particularly in software, business methods, and diagnostics—as unpatentable “abstract ideas” or “laws of nature.” This created significant barriers for innovators in emerging technology sectors.
New Focus on Emerging Technologies
Current USPTO leadership has signaled a dramatic shift, emphasizing that restricting patent protection in cutting-edge fields like artificial intelligence, cryptocurrency, and medical diagnostics represents a national security concern. On his first full day in office, the current director signed patents in both distributed ledger technology and medical diagnostics—two areas that previously faced significant § 101 hurdles.
AI and Machine Learning Patents
A particularly notable development involves the ex parte Desjardins case, where the director vacated a § 101 rejection of a machine learning patent. The decision emphasized that:
- Machine learning represents an improvement to machines by definition, as algorithms improve with use
- AI technologies are foundational to American economic competitiveness
- Patent examiners should focus on prior art rejections under §§ 102, 103, and 112 rather than resorting to § 101
This guidance may be viewed by some as contradicting Federal Circuit precedent suggesting AI-related innovations face heightened § 101 scrutiny, setting up a potential conflict between the USPTO and appellate courts.
Practical Application Standard
The USPTO continues applying the “practical application” analysis from its 2019 guidelines, which asks whether a claimed invention integrates an abstract idea into a practical application or includes significantly more than the abstract idea itself. However, the office now appears more willing to find claims patent-eligible under this standard, particularly in technology areas deemed strategically important.
Challenges and Uncertainties Ahead
While these changes benefit patent owners in many respects, they also create challenges:
Examination Consistency
Many examiners have not yet received training on recent policy changes and have limited experience evaluating evidence submissions that support patent eligibility. This may create inconsistency in how applications are examined across different art units.
Appellate Court Conflicts
The USPTO’s more permissive approach to patent eligibility may conflict with Federal Circuit precedent maintaining stricter standards. This creates uncertainty about whether patents allowed under new USPTO guidance will withstand judicial scrutiny if challenged in court.
Political Vulnerability
Because current changes stem primarily from executive policy rather than statutory amendments, they remain vulnerable to reversal with future administration changes. Patent owners face uncertainty about whether today’s protections will persist in coming years.
Legal Challenges to IPR Denials
While statute prohibits appeals of IPR institution decisions, petitioners are filing creative mandamus petitions and other challenges attempting to circumvent this bar. Some argue that new discretionary denial factors exceed the USPTO’s statutory authority, potentially leading to judicial intervention that could reshape or reverse current policies.
Strategic Considerations for Patent Owners
Given this shifting landscape, patent owners should consider several strategic approaches:
Leverage Current Climate for Patent Prosecution
Applications in previously difficult areas—particularly AI, software, and diagnostics—have better prospects for allowance under current examination practices. Applicants should consider:
- Filing continuation applications to pursue broader claim scope
- Submitting declarations from inventors or technical experts supporting § 101 eligibility
- Appealing § 101 rejections to the PTAB, which shows increased willingness to reverse such rejections
Strengthen Patent Portfolios Against Future Challenges
Even with lower IPR institution rates, patent owners should:
- Document validation of patents through any proceedings (litigation, reexaminations, previous IPRs)
- Consider whether to pursue reexamination proactively to establish validity
- Maintain detailed records supporting patent value and commercial implementation
Plan for Policy Uncertainty
The dramatic policy swings in recent years demonstrate the importance of:
- Avoiding over-reliance on current USPTO positions that could reverse
- Building patent portfolios with depth that can withstand some invalidations
- Considering global patent protection strategies that don’t depend solely on U.S. policy
Monitor Developments Actively
USPTO policies continue evolving rapidly. Patent owners benefit from:
- Tracking new memoranda, examination guidelines, and director decisions
- Understanding how policies apply to specific technology areas
- Adjusting prosecution and enforcement strategies as policies develop
The Path Forward
The USPTO’s current direction reflects a philosophy that strong patent protection drives American innovation and competitiveness, particularly in strategically important technologies. However, the dramatic nature of recent changes suggest continued turbulence ahead.
For patent owners and businesses with IP portfolios, the key is remaining informed and adaptable. While current policies offer significant advantages, the reversals of recent years demonstrate that today’s certainties may become tomorrow’s uncertainties. Working with experienced patent counsel who track these developments and understand both USPTO examination practice and litigation realities remains essential for navigating this dynamic landscape.
The patent system has always balanced competing interests: rewarding innovation while preventing overreach, providing certainty while adapting to new technologies, and maintaining consistency while responding to changing priorities. The current transformation at the USPTO represents another chapter in that ongoing balancing act—one with significant implications for anyone seeking to protect innovative ideas.
This blog post provides general information about USPTO policy developments and should not be construed as legal advice for specific situations. Patent owners facing questions about how these changes affect their particular circumstances should consult with qualified patent counsel.
About the Author
David Carus is a Registered Patent Attorney who practices in the areas of patent prosecution. His experience includes electrical and electronic equipment including, for example, mobile wireless communications devices, antennas, finger biometric sensing devices, display technologies, and haptics, cables, laser and optical devices, test equipment, radar devices, semiconductor devices, mechanical devices, and Internet related inventions, for example, e-commerce, digital couponing, and Internet of Things (IOT) systems.