Patent Law Weblog
recent posts
- Why the Alice Test is Stupid, Part IV: The Usefulness Paradox
- Teva Capitulates to Federal Trade Commission Coercion
- USPTO Issues Memoranda on Subject Matter Eligibility
- USPTO Revokes Guidance on AI-Assisted Inventorship, But Rules Remain Basically the Same
- Why the Alice Test is Stupid, Part III: Eligible Independent Claims Can Have Ineligible Dependent Claims
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Category: Patent Office Rules & Procedures
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By Michael Borella — On August 27, 2025, the U.S. Patent and Trademark Office quietly announced that it would be deprecating its current Patent Assignment Search and Assignments on the Web assignment search portals and replacing them with a new portal accessible from Assignment Center. The announcement states: Starting on September 27, 2025, Assignment Search…
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By Donald Zuhn –- On Monday, President Trump's nomination for Under Secretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office, John A. Squires, was submitted to the U.S. Senate for confirmation. Mr. Squires is currently a partner at Dilworth Paxson LLP in New York. His Dilworth Paxson biography indicates…
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By Kevin E. Noonan — The U.S. Patent and Trademark Office has a history of attempting to challenge judicial decisions that the Office, usually for its own policy reasons, takes issue with.[1] Recently, the Office decided to challenge the rationale behind the Supreme Court's decision in KSR v. Teleflex for certain technologies, specifically by advocating that…
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By Michael Borella — For most of the last two decades, the U.S. Patent and Trademark Office offered its electronic filing system (EFS), through which practitioners could file patent applications and related prosecution documents, and private patent application information retrieval (private PAIR), through which practitioners could view filed applications. Both were retired on November 8,…
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By Joshua Rich and Andrew Velzen — On May 10, 2024, the U.S. Patent and Trademark Office published a Notice of Proposed Rulemaking (NPRM) regarding terminal disclaimer practice. The proposed rule would have required any terminal disclaimer filed to obviate nonstatutory (obviousness-type) double patenting to include provisions tying the validity and enforceability of the claims…
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By Michael Borella and Joshua Rich — The advice to practitioners faced with marginally relevant prior art has long been "when in doubt, cite it." There was a small cost for the applicant (or practitioner) to cite such art by filing an information disclosure statement (IDS), but substantial potential risks that could arise if the…
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By Kevin E. Noonan — As has been expected, the Director of the U.S. Patent and Trademark Office, the Honorable Kathi Vidal, has announced her resignation. Deputy Director Derrick Brent will assume her position (at least temporarily) starting in the second week of December. As Director, Ms. Vidal (at right) has been involved in a variety…
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By Michael Borella — As required by President Biden's Executive Order 14110 ("Safe, Secure, and Trustworthy Development and Use of Artificial Intelligence"), the U.S. Patent and Trademark Office has published an update to its subject matter eligibility guidance for examiners regarding inventions employing artificial intelligence (AI). As this is the first update to the USPTO's…
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By Kevin E. Noonan – Last November, the U.S. Patent and Trademark Office issued Guidance to the Examiner Corps that was disclosed to the public at the March 19, 2024 Biotechnology, Chemical, and Pharmaceutical Partnership Meeting, on resources to be used by examiners to comply with the dictates of Executive Order 14036 from the Biden Administration related…
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By Joshua Rich — As discussed at length in a previous post on this blog (see "USPTO Proposed Rule Change to Terminal Disclaimer Practice"), the U.S. Patent and Trademark Office has proposed amending the form of terminal disclaimer to be used by patent applicants. Specifically, it proposes requiring terminal disclaimers filed to obviate nonstatutory (or…
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