Posts in Inventors Information

There are lots of familiar recommendations to make U.S. businesses more competitive globally. All are valid, but none are particularly creative or original. One solution that hasn’t been pursued is not only simple, a variation of it has been implemented by America’s largest and most aggressive economic competitor: remove the filing fees for inventors and intellectual property (IP)creators under 18.

The United States Patent and Trademark Office (USPTO) today released two memos meant to provide additional guidance around the use of patent subject matter eligibility declarations (SMEDs) for examiners, applicants and practitioners, particularly with respect to “applied technologies” in areas like artificial intelligence and medical diagnostics. The memos do not alter existing procedures and are effective immediately.

The deadline for comments on the U.S. Patent and Trademark Office’s (USPTO’s) Notice of Proposed Rulemaking (NPRM) issued in October, titled “Revision to Rules of Practice before the Patent Trial and Appeal Board,” was yesterday, December 2. As of today, the Office has received 10,783 comments and has published just over 1,000 of them. The rules have been broadly welcomed by IP holders and practitioners, and broadly opposed by those who want to preserve the option to easily challenge patents. Below, we summarize several submissions from individuals and organizations on both sides.

The U.S. Patent and Trademark Office (USPTO) has rescinded its AI Inventorship guidance issued in February 2024 under the previous USPTO administration and published new guidance emphasizing that the Pannu factors for joint inventorship do not apply in the context of an AI invention involving a single inventor. The guidance issued on February 13, 2024, under previous USPTO Director Kathi Vidal discussed the relevance of the three-part test articulated in Pannu v. Iolab Corp. in determining inventorship in the context of AI-assisted inventions.

Howard Lutnick has been universally criticized by industry for his reported proposal to tax patent values and revenue share with universities. Howard Lutnick is absolutely right about the problem. Here’s why. The patent system was designed for individual inventors. Thomas Edison, the Wright brothers—these were lone entrepreneurs securing temporary monopoly rights in exchange for disclosing their inventions to the public. But sometime after World War II, corporations and universities completed a quiet takeover of the patent office. Today’s patent landscape is dominated by patent oligarchs: systematic corporate R&D programs filing thousands of applications annually, not individuals pursuing personal innovation.

IPWatchdog has learned that Gilbert Hyatt intends to seek en banc review of the Federal Circuit’s prosecution laches doctrine. The issue that will be teed up for potential en banc rehearing by the Federal Circuit is: Whether the defense of “prosecution laches” may bar a claim for issuance of a patent that meets the statutory criteria for issuance under the Patent Act. Fundamentally, Hyatt is likely to ask the entire Federal Circuit to consider the continued viability of this doctrine in the wake of Petrella v. Metro-GoldwynMayer, Inc., 572 U.S. 663 (2014), and SCA Hygiene Prods. Aktiebolag v. First Quality Baby Prods., LLC, 580 U.S. 328 (2017).

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Friday issued a precedential decision affirming the U.S. Patent and Trademark Office’s (USPTO’s) denial of a petition for rulemaking filed by US Inventor (USI) asking the Office to establish criteria to limit its authority to institute inter partes review (IPR) or post-grant review (PGR) under the America Invents Act (AIA).

Timing is everything in the world of American innovation. On September 16, 2025, I hand delivered a petition for rulemaking to the U.S. Patent and Trademark Office (USPTO) seeking a simple, long-overdue fix: clarify by rule that “cancellation” of a patent claim means the end of rights prospectively, not erasure of decades of hard-earned reliance, contracts, and value. After living this process, I know firsthand how timing and retroactivity can destroy the lives and businesses of those who play by the rules.

John Squires was officially sworn in as the 60th U.S. Patent and Trademark Office (USPTO) Director on Tuesday, September 23, and today issued the first patents of his term, both in technology sectors that often face increased scrutiny about patent eligibility during patent prosecution and in the courts. The two issued patents were directed to distributed ledger/crypto and medical diagnostics technologies.

Representatives of 36 conservative organizations sent a letter yesterday to Secretary of Commerce Howard Lutnick, appealing to him as an inventor to walk back his proposal to charge a 1%-5% patent “tax” on the value of granted U.S. patents. Lutnick’s proposal was first reported by the Wall Street Journal in July. While few details have been revealed about the plan still, it has drawn harsh criticism, including by IPWatchdog’s Founder and CEO Gene Quinn, whose article was quoted in the conservative groups’ letter. Quinn called the idea “catastrophically stupid” and “fraught with peril.”

On Friday, August 29, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in Hyatt v. Stewart affirming the U.S. District Court for the District of Columbia’s ruling on remand that inventor Gil Hyatt’s efforts to obtain patent rights from four patent applications filed in 1995 were barred by prosecution laches. Ruling that the U.S. Patent and Trademark Office’s affirmative defense was available in Hyatt’s civil action to obtain patent rights under 35 U.S.C. § 145 under the law of the case, the Federal Circuit also rejected arguments that federal jurisdiction under Section 145 extended to the entirety of the Board’s decision, including parts of those rulings in which the Board reversed examiner rejections.

The dramatic ending of Ridley Scott’s 1991 crime drama, Thelma & Louise, is oft cited as an analogy for the thin line between patent claims being narrow enough to withstand validity challenges but broad enough to maintain infringement value. This tension frames a dance between parties throughout litigation in large part because claim terms are generally not written in ordinary English and need to be translated. But what if we drafted claims with litigation in mind? What if we drafted patents for the people reading and interpreting them rather than suffering unnecessary linguistic sacrifices during prosecution to appease examiners who are just trying to do their jobs?

Yesterday, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in Global Health Solutions LLC v. Selner affirming the Patent Trial and Appeal Board (PTAB) in the first appeal of a derivation proceeding under the America Invents Act (AIA) litigated at the Board. Although the Federal Circuit corrected the PTAB on the proper analysis for derivation proceedings in light of the AIA’s related first-to-file provisions, the appellate court found no reversible error in the Board’s determination that Marc Selner could not have derived the invention at issue from GHS’ inventor because Selner proved an earlier conception of the invention.

Filing a patent application is one of the most important steps an inventor can take. It protects your priority rights, signals credibility to investors, and can form the foundation of a business. But it’s also one of the easiest steps to get wrong. During my 15 years as a patent examiner at the U.S. Patent and Trademark Office (USPTO), I reviewed thousands of applications. Time and again, I saw filings that were doomed before they even reached my desk. Not because the idea lacked merit, but because inventors rushed ahead without preparing properly.