USPTO 101: Understanding the Risks of Subject Matter Eligibility Declarations | IPWatchdog Unleashed

The USPTO deserves some credit for recognizing that applicants may at times need an opportunity to explain technical improvements that examiners have failed to appreciate, but there is real risk associated with filing a SMED that should cause practitioners to pause rather than race forward without serious consideration. And despite some difference of opinion, we all agreed on an essential point: Filing a SMED should not be the first line of defense against an eligibility rejection; it should should be treated as a last resort. Filing a SMED requires serious consideration of the advantages, disadvantages, and alternatives. Examiner interviews, arguments grounded in the existing specification, appropriate claim amendments, and appeals all deserve careful consideration before ever adding sworn statements to the prosecution history. The question must be whether the declaration supplies something genuinely necessary to advance the case, and even then must be intentionally specific and narrow.

Inventor Advocacy Groups File Amici Briefs Supporting Centripetal’s Claim Construction Challenge at SCOTUS

Last week, the entrepreneur advocacy organization Alliance for U.S. Startups and Inventors for Jobs (USIJ) filed an amicus brief in support of the petition for writ of certiorari before the U.S. Supreme Court filed by patent owner Centripetal Networks challenging late changes to claim construction wrought by the district court without notice or opportunity to be heard in its patent infringement case against Cisco Systems. The USIJ’s filing follows one week after inventor advocacy group US Inventor filed its own amicus brief in support of Centripetal’s petition, arguing that a modest remedy to the deprivation of Centripetal’s due process rights would improve fairness for both patent owners and accused infringers alike.

U.S. Chamber Index Finds 8 of 12 Sampled Economies Score Below 50% in Benchmark of Trade in Unsafe Medicines

The U.S. Chamber of Commerce’s Global Innovation Policy Center released the first edition of its Trade in Unsafe Medicines Index today, a report prepared with Pugatch Consilium that benchmarks 12 economies on their propensity to contribute to trade in unsafe and illicit medicines and their ability to deter it. Eight of the 12 economies scored below 50%, and the overall mean score was 43.03%.

CAFC Affirms Ticketing Companies’ Motions to Dismiss Due to Pro Se Plaintiff’s Failure to Timely Oppose

The U.S. Court of Appeals for the Federal Circuit (CAFC) today affirmed the dismissal of a pro se patent owner’s claims against Live Nation, Ticketmaster, Major League Baseball and several law firms, concluding that the plaintiff waived her appellate arguments by failing to oppose the defendants’ dismissal motions in district court.

Understanding the Entire Market Value Rule: Legal Foundations and Evolution

In patent damages, apportionment reflects the fundamental principle that a patentee may recover only the value attributable to the patented invention, not the value of unpatented features or components. In practice, this means that damages must be tied to the incremental contribution of the patented technology to the accused product. The entire market value rule (EMVR) is a doctrine in patent damages, in particular, reasonable royalty damages, that operates as a narrow “exception” to the apportionment principle.

A Winning Combination: Recent Decisions Signal Strengthened Protectability of Compilation and Combination Trade Secrets

For companies in many industries, their most valuable trade secrets reside not in a single formula or document, but in years of accumulated data, coordinated processes, and combinations of technical and commercial information from various internal sources. Engineering know-how (including negative know-how), integrated software features, and customer databases can reflect years of investment and work effort and give competitors a shortcut if acquired improperly and used. Compilation and combination trade secret protection helps safeguard that collective value, even when some individual components are publicly known or unprotectable standing alone.

Other Barks & Bites for Friday, October 23: EUIPO Announces Record Number of Counterfeits Seized in 2025; EPO Study Shows Growing Importance of Tech Transfer Offices; and Taction Seeks to Add Damages to $5.7 Billion Apple Infringement Verdict

This week in Other Barks & Bites: SpaceX reportedly seeks to build nationwide wireless carrier through purchase of 80,000 cellular sites; a joint study to which the European Patent Office contributed recommends strengthening tech transfer offices across the EU; the Unified Patent Court’s Court of Appeal finds that printed Gucci leather products don’t infringe patent claims to methods of decorating leather; and more.

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