In 2020, Apple and several other parties collectively sued the Patent Office in a U.S. district court in California. They alleged that guidance* the Director gave the Patent Trial and Appeal Board—on how, while parallel patent litigation was pending, to
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
Last summer, the Federal Circuit affirmed the Patent Trial and Appeal Board’s determination that claims in a pair of patents owned by Agilent Technologies claiming chemically modified CRISPR guide RNAs are unpatentable. Agilent Techs., Inc. v. Synthego Corp., 139
The Federal Circuit’s decision last fall in Merck Serono S.A. v. Hopewell Pharma Ventures, Inc., Appeals 2025‑1210, ‑1211 (Fed. Cir. Oct. 30, 2025), reh’g and reh’g en banc denied (Jan. 22, 2026) (link), offers important guidance on
Practitioners before the Patent Trial and Appeal Board are well-acquainted with the statutory bar on judicial review of institution decisions. But what happens when the Board defers—for more than a year—a decision to rehear its non-institution decision, waiting for the
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
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
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
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
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
