The past year brought significant developments in patent eligibility, prosecution procedures, and inter partes review. For applicants and patent owners, these changes affect how applications should be prepared, how rejections should be addressed, and how patent challenges should be coordinated with litigation.
Patent Eligibility for Software and AI Inventions
For software and artificial intelligence inventions, Ex parte Desjardins provides a useful example of a patent-eligible technical improvement. The USPTO’s Appeals Review Panel vacated an eligibility rejection involving machine-learning training that protected previously learned information while learning new tasks. The practical lesson is to explain the technical problem and ensure that the claims recite the operation that solves it. Merely describing an invention as using AI does not establish eligibility.
Subject Matter Eligibility Declarations
The Office also expanded its guidance on Subject Matter Eligibility Declarations, or SMEDs. Its September 2026 memorandum and accompanying flowchart emphasize objective evidence, a clear connection between the evidence and the claims, and timely submission. A useful declaration explains how the claimed technology works and addresses a disputed factual premise. A statement that the invention is “patent eligible” adds little by itself.
Burden of Proof in Examination and Litigation
The burden of proof also deserves attention. In examination, the Office’s flowchart states that an evenly balanced evidentiary record favors the applicant. In litigation involving an issued patent, the challenger must establish underlying invalidity facts by clear and convincing evidence, while the ultimate eligibility determination remains a legal question. USPTO guidance does not control the court’s analysis.
Judge Participation in Pre-Appeal and Appeal Conferences
Another September change permits administrative patent judges to participate in pre-appeal and appeal conferences. Their participation is optional and advisory. A participating judge cannot later sit on the panel deciding the same application’s appeal. This creates an opportunity for earlier appellate input, reinforcing the value of a complete factual record before seeking review.
Inter Partes Review and Litigation Coordination
For inter partes review, a strong prior-art challenge does not guarantee institution. In Magnolia Medical Technologies v. Kurin, the Director denied institution after substantial district-court proceedings, where the petitioner’s own disclosure failures had prevented consideration of its invalidity theories. The decision underscores the importance of coordinating litigation and USPTO strategy early.
Other Filing and Procedural Changes
Other developments include revised foreign-applicant representation requirements, greater scrutiny of certain unintentional-delay petitions after one year, and changes to DOCX filing procedures. Applicants should review their filing and docketing practices alongside their substantive patent strategy.
Contact us to learn more and to schedule a confidential consultation.
About the Author
David Carus is a Registered Patent Attorney and business executive who advises companies on protecting and commercializing innovative technologies. Drawing on experience as both an intellectual property attorney and the chief executive of a growing aviation company, he provides practical, business-focused guidance on intellectual property strategy, patent prosecution, patent litigation, and aviation regulatory matters.