Posts in USPTO

The U.S. Patent and Trademark Office (USPTO) issued an updated memorandum today addressed to all patent applicants and practitioners that provides a flowchart for analyzing Subject Matter Eligibility Declarations (SMEDs) submitted under 37 C.F.R. Section 1.132 and reviews best practices for submitting them. The memo, from USPTO Director John Squires, is an addendum to an April 2026 SMED memorandum and, according to the USPTO, “this memorandum is consistent with existing USPTO guidance and does not announce any new USPTO practice or procedure.”

This week on IPWatchdog Unleashed, IPWatchdog President Renée C. Quinn spoke with Coke Morgan Stewart. Formerly Acting Director and Deputy Director of the U.S. Patent and Trademark Office (USPTO), Stewart is now president and CEO of the Council for Innovation Promotion (C4IP). Their conversation, recorded at IPWatchdog’s 2026 Women’s IP Forum, examines what she learned while leading the agency, why she believes the patent system needs legislative reform, and how her experience has shaped her approach to leadership and advocacy.

Using one associate to prepare a claim construction chart and a second to check it is ordinary practice. In In re Brian E. Mitchell, Proceeding No. D2026-16, a patent attorney did the same with two generative AI tools: one to draft proposed claim constructions and a second to review them. Erroneous citations still reached the district court, and the U.S. Patent and Trademark Office’s (USPTO’s) Office of Enrollment and Discipline (OED) publicly reprimanded him for that.

U.S. Patent and Trademark Office (USPTO) Director John Squires has postponed the anniversary celebration scheduled for Tuesday, September 29. In a message sent to invitees from squirescelebration@gmail.com and signed “John,” Squires said his schedule “isn’t cooperating” and called a “rain delay until we can reschedule.” The message provides no new date.

The U.S. Court of Appeals for the Federal Circuit (CAFC) issued a decision on September 25 in Zentian Ltd. v. Apple Inc., affirming a Patent Trial and Appeal Board (PTAB) final written decision that found all claims of a speech recognition patent unpatentable as obvious. The court rejected Zentian’s challenge to the PTAB’s construction of the term “feature vector” and affirmed the determination that codewords in a prior art reference fall within that term.

IPWatchdog has learned that U.S. Patent and Trademark Office (USPTO) Director John Squires plans to celebrate one year in office with an event on September 29. To our knowledge, this is the first time a Director has publicly celebrated the one-year anniversary of their appointment. After the original publication of this article Director Squires took to LinkedIn to claim the story was not properly sourced, focusing only on the location of the event. Squires posted: “I dunno there Gene Quinn, time to invest in a new fact-checker. The event’s being held at Ford’s Theater.” The invitation itself (pictured above) clearly and unambiguously says that the event would take place at the Motion Picture Association headquarters. And whether this event takes place at MPA headquarters or Ford’s Theater, questions still remain about who is paying for the event, whether the event is a public USPTO event, what purpose the event will promote, and whether USPTO employees are planning or executing the event.

President and CEO of the Council for Innovation Promotion (C4IP) and former Acting Director and Deputy Director of the U.S. Patent and Trademark Office (USPTO) Coke Morgan Stewart told attendees of IPWatchdog’s Women’s IP Forum today that “we need to get out the paddles and shock the patient” when it comes to the state of the U.S. patent system.

Recent discussions about artificial intelligence (AI) in legal practice tend to split into two opposing positions. One holds that junior attorneys should not meaningfully use AI because it will interfere with their development and prevent the formation of sound legal judgment. The other holds that AI will replace junior attorneys by eliminating the tasks they traditionally performed. Both positions rest on the same hidden assumption, which is that AI carries a direction of its own and that the profession’s task is to decide whether to accept it or resist it.

Patent prosecution is often treated as a sequence of discrete tasks: respond to the office action. Amend the claim. Make the argument. Obtain allowance. Move on. Recent U.S. Court of Appeals for the Federal Circuit decisions show why that model is incomplete. The prosecution record can later shape infringement theories, affect whether a reference qualifies as prior art, and determine whether a statutory avenue for review remains available. The cases arise under different doctrines, but they support one durable conclusion: prosecution is part of the patent’s long-term risk allocation.

Following a July petition for writ of certiorari filed by Kahoot AS! asking the U.S. Supreme Court to consider whether the U.S. Patent and Trademark Office’s (USPTO’s) “settled expectations” doctrine for denying inter partes review (IPR) requests is authorized under the patent statute, the PTAB Bar Association and other amici this past week have urged the Court to take up…

The U.S. Court of Appeals for the Federal Circuit (CAFC) issued a decision today in In re Incept LLC, vacating and remanding a Patent Trial and Appeal Board (PTAB) decision that had affirmed an examiner’s rejection of a medical catheter patent application as obvious. Since the Board’s obviousness analysis relied on an incorrect construction of the claim term “flow barrier,” the CAFC declined to reach the underlying obviousness question and returned the case to the Board for further proceedings.

Sources familiar with operations at the United States Patent and Trademark Office (USPTO) have told IPWatchdog that USPTO Director John Squires has informed the Administrative Patent Judges (APJs) on the Patent Trial and Appeal Board (PTAB) that he will be relinquishing decision-making authority on which patent challenges to institute, returning the decision to the PTAB. 

Congress should let provisional applications be renewable for an extra year, and then publish them if a nonprovisional is not filed. Filing a nonprovisional is a big deal for small businesses. In some cases the expense pays off because it lets inventors recover from infringers, while in others it does not pay off because the market never develops. Under today’s law, the decision is mostly all or nothing—spend large amounts of money on attorney and United States Patent and Trademark Office (USPTO) fees, or compete in the market without protection.

The U.S. Court of Appeals for the Federal Circuit (CAFC) issued a decision today in Guymon v. Squires, affirming a decision from the U.S. District Court for the Eastern District of Virginia dismissing with prejudice an inventor’s lawsuit challenging a patent term adjustment (PTA) determination. Circuit Judge Hughes wrote for the court, joined by Chief Judge Moore and Circuit Judge Lourie, and rejected each of the three arguments that Guymon raised on appeal.