PatentNext Blog
https://www.patentnext.com/PatentNext is a weblog (“Blog”) about Patent and Intellectual Property (IP) law focusing on Next-generation and New Age technologies.
Recent Blog Posts
- USPTO Updates SMED Best Practices PatentNext Takeaway: On April 30, 2026, the USPTO issued a memorandum titled “Best Practices for Submission of Rule 132 Subject Matter Eligibility Declarations (SMEDs),” updating the Office’s December 4, 2025 guidance to applicants and practitioners. The new memorandum reinforces the Office’s SMED framework and characterizes it as a living body of guidance informed by practitioner experience.The result is not a change in law or procedure, but a signal: the USPTO views SMEDs as an increasingly important evidentiary tool for resolving §... More
- USPTO Examiners issue more Written Description (Section 112) rejections following Precedential Ex Parte Desjardins decision PatentNext Takeway: Ex parte Desjardins—and especially the USPTO’s decision to make it precedential—appears to be shifting examination away from § 101 and toward § 112 written-description scrutiny, particularly for AI-related inventions. For AI-related inventions, a central takeaway is that practitioners should expect more examiner demands for concrete disclosure of how an AI model is trained, what inputs and outputs are used, how preprocessing and post-processing occur, and how inference or agentic workflows actually operate. Prosecution data and a recent office... More
- The USPTO’s Revised Guidance regarding AI-Assisted Inventions PatentNext Summary: The USPTO has rescinded its February 2024 inventorship guidance for AI-assisted inventions and replaced it with revised guidance issued on November 28, 2025, so prior materials relying on the earlier guidance should be treated as outdated. The revised guidance emphasizes traditional conception-based inventorship, makes clear that AI may assist but cannot be an inventor, and flags a practical priority risk where a foreign filing naming an AI system as the sole inventor can undermine U.S. priority claims. It... More
- The Pitfalls of Failure to Disclose Material Information to the USPTO and Information Disclosure Statement (IDS) Best Practices 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 a later finding of inequitable conduct and resulting unenforceability of an issued patent. This article summarizes the legal framework governing materiality, the scope of the disclosure duty, foreign and parallel-application considerations, and practical IDS best practices for attorneys seeking to... More
- Ex parte Carmody: A Quiet but Important Signal on AI Eligibility Under §101 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 is precisely why it matters.The Holding, in BriefIn Ex parte Carmody, the PTAB reversed a §101 rejection of claims directed to an AI-based system for marketing and sales orchestration. The Board agreed that the claims implicated abstract ideas at Step 2A, Prong... More
- USPTO Issues Guidance on Subject Matter Eligibility Declarations (“SMED”) 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 the Patent Examining Corps, clarifying how examiners should treat applicant-submitted evidence under 37 CFR 1.132 in traversing subject matter eligibility (SME) rejections. The second, the Best Practices for SMEDs Memo, addresses the legal community, emphasizing strategies for maximizing the value and... More
- Further Update: USPTO Issues Memo Integrating Desjardins Into the MPEP 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 the next step: it has formally issued a memo to the examining corps announcing updates to the MPEP that incorporate Desjardins directly into the Office’s subject-matter eligibility framework.Key Highlights from the Memo Desjardins is now expressly embedded in the MPEP. The memo confirms revisions to... More
- Artificial Intelligence (AI) Patenting Handbook: Version 3.0 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 and generative AI), drafting and prosecuting stronger AI patent applications, and navigating enforcement, global practice, and emerging AI inventorship and governance issues—designed as a day-to-day reference for in-house and outside counsel.****I am excited to announce the publication of the Intellectual... More
- AI vs. TC: Artificial Intelligence, Application Routing, and the Battle for Consistency at the USPTO 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 terms of a possible shift in how the Office treats rejections under § 101, in particular for applications involving software and artificial intelligence (AI). [2][3][4] However, it is worth considering that these reminders were not issued to the entire examining corps but... More
- Update: Desjardins Decision Made Precedential When we first covered Ex parte Desjardins, we noted that the decision, which was issued just days after Director John Squires took office, could mark the beginning of a new era for AI and software patent eligibility at the USPTO. That prediction now appears well-founded. On November 4, 2025, Director Squires designated the Desjardins decision as precedential, ensuring that its reasoning now binds all patent examiners and the Patent Trial and Appeal Board (PTAB).As discussed in our prior post, Desjardins... More