Julie Burke PhD

Association for American… • 22K followers

USPTO Efforts to Reducing the Backlog are Not Working as Planned            On July 11, 2024, Former Director Vidal launched an initiative to address the backlog.[1] Since Jan 21, 2025, Acting Director Stewart has taken this a step further and adopted a back-to-basics approach to address the backlog. Changes include training and other time has been cut, employees reassigned to the examining corps, supervisory patent examiners directed to examine applications and more.            In May, the USPTO reported that "the USPTO examining force is working hard to reduce the backlog of patent applications." In the last three months, these efforts have reduced the backlog of unexamined patent applications from 838,000 to 827,000. [3] Would this explanation be true?             The attached charts compare the amount and type of work being performed by the patent corps in April 2025 as compared to July 2024. - Chart A shows a slight increase in number of examiners from July 2024 to April 2025.[2] - Chart B shows an increase in pending inventory across all Technology Centers (TCs) - Charts C, D, and E show decreases in the number of disposals, allowances and final rejections across all TCs. This would be expected if examiners are focused on producing more first actions on the merits. - Yet Chart F shows that in April 2025 as compared to July 2024, every TC produced fewer first actions on the merits.The data in Charts A-F signify a patent corps that has throttled back. - In FY2024, examiners delivered 44,404 production units a month. - In April 2025, examiner delivered 42,311 production units. This across-the-board decline in total work output is likely attributed to: - Loss of senior examiners who examine more applications in less time as required by their performance plan quota system   - Struggling junior examiners who have less access to mentors and training - Poorly trained junior examiners who didn't receive full knowledge foundation - Examiners using up sick and annual leave in advance of a feared RIF - Examiners reducing their production to the minimal 95% level - Examiners struggling with poor morale  - Poor IT systems chronically interfering with the volume, speed and quality of the search and examination processThe recent ~1.3% decrease in the unexamined patent application backlog was mostly accomplished by a decrease in patent filings.As a patent examiner wryly quipped on reddit "All you have to do is crush the economy so there are fewer filings, and the backlog goes down."USPTO #patent #ipqualitypro #IP #backlog[1] https://lnkd.in/gm2wSwzn[2] It’s unclear whether the number of examiners includes Supervisory Patent Examiners (SPEs) and/or reassigned personnel who are now examining patent applications.[2] https://lnkd.in/g4ch2eDM

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Paul Harrity

Harrity & Harrity, LLP • 2K followers

⚠️ The USPTO’s new FY 2026 PAP changes are a misstep for innovation.I’ve long advocated for robust use of Examiner interviews - not just as a negotiating tactic, but as a means to build mutual understanding, speed prosecution, and align expectations. Those conversations are often the most effective way to bridge gaps in claim interpretation, prior art, or invention scope.Now, under the revised PAP:❌ Interview credit is capped at one hour per case, regardless of the complexity of the application.❌ Any further interview time must receive supervisory approval, requiring justification that it “advances prosecution.”These changes risk turning interviews into a bureaucratic checkbox, rather than a tool for progress. When examiners know they only get “credit” for one hour, many will default to refusing second interviews or discouraging back-and-forth discussion altogether.In practice, that could mean longer prosecution, more RCEs, and fewer opportunities to reach agreement informally. It punishes complexity, it punishes nuance, and it undermines a tool that has proven to deliver clarity and efficiency.My ask to the USPTO: don’t stifle the very conversations that lead to better results, fewer rejections, and stronger patents. Let interviews remain a tool of collaboration - not a time-tracked burden.#PatentProsecution #USPTO #PatentLaw #Innovation #Leadership #ContinuousImprovement

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Eugene Lhymn

2K followers

Re: USPTO and DOGE - USPTO is actively cutting access to many of its important Examiner search tools, some of them being fairly critical. There will be consequences to this down the line in terms of patent validity and allowance rate. I would expect Examiner searches to be more limited than ever before, and allowance rates to go up. Patent quality and validity will be 100% impacted.

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Dennis Crouch

University of… • 115K followers

Patently-O: "In what appears to me as a significant demotion of senior Patent Trial and Appeal Board leadership, Chief Judge Scott R. Boalick and Vice Chief Judge Mike Tierney are being reassigned to lead the USPTO’s Central Reexamination Unit . . . "https://lnkd.in/gsNb9uvj

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Robert Plotkin

Blueshift IP, LLC • 22K followers

𝗦𝗼𝗳𝘁𝘄𝗮𝗿𝗲 𝘁𝗵𝗮𝘁 𝗶𝗺𝗽𝗿𝗼𝘃𝗲𝘀 𝗰𝗼𝗺𝗽𝘂𝘁𝗶𝗻𝗴 𝘁𝗲𝗰𝗵𝗻𝗼𝗹𝗼𝗴𝘆 𝗰𝗮𝗻 𝗯𝗲 𝗽𝗮𝘁𝗲𝗻𝘁 𝗲𝗹𝗶𝗴𝗶𝗯𝗹𝗲 𝘄𝗵𝗲𝗻 𝘀𝘁𝗿𝗮𝘁𝗲𝗴𝗶𝗰𝗮𝗹𝗹𝘆 𝗽𝗿𝗲𝘀𝗲𝗻𝘁𝗲𝗱.When facing subject matter eligibility challenges under 35 U.S.C. § 101, one of the most effective pathways to eligibility is demonstrating that your invention provides a technical improvement to computing technology. This strategy is directly supported by both case law and USPTO guidance, and offers a clear route to overcome eligibility rejections, particularly for software innovations.𝗦𝗼𝗳𝘁𝘄𝗮𝗿𝗲 𝗖𝗮𝗻 𝗕𝗲 𝗣𝗮𝘁𝗲𝗻𝘁 𝗘𝗹𝗶𝗴𝗶𝗯𝗹𝗲 𝗪𝗵𝗲𝗻 𝗜𝘁 𝗜𝗺𝗽𝗿𝗼𝘃𝗲𝘀 𝗖𝗼𝗺𝗽𝘂𝘁𝗲𝗿 𝗙𝘂𝗻𝗰𝘁𝗶𝗼𝗻𝗮𝗹𝗶𝘁𝘆The technical improvement strategy offers a powerful advantage: it allows your claims to be found eligible at Step 2A Prong Two, meaning you can avoid the "significantly more" analysis at Step 2B. This can provide a more straightforward path to patent eligibility, particularly for software innovations that might otherwise face substantial hurdles.The courts have repeatedly confirmed that software innovations can be patent eligible when they improve computer technology. In 𝘌𝘯𝘧𝘪𝘴𝘩 𝘷. 𝘔𝘪𝘤𝘳𝘰𝘴𝘰𝘧𝘵, the Federal Circuit found claims to a self-referential database eligible because they were directed to an improvement in computer capabilities rather than an abstract idea.Key considerations for demonstrating a technological improvement:1. The specification should clearly explain the improvement2. The claim must reflect that improvement3. The improvement should be to computer functionality itself, not just an improvement achieved using generic computer components𝗜𝗺𝗽𝗹𝗲𝗺𝗲𝗻𝘁𝗶𝗻𝗴 𝘁𝗵𝗲 𝗦𝘁𝗿𝗮𝘁𝗲𝗴𝘆: 𝗖𝗹𝗮𝗶𝗺 𝗦𝘁𝗿𝘂𝗰𝘁𝘂𝗿𝗲 𝗮𝗻𝗱 𝗣𝗿𝗮𝗰𝘁𝗶𝗰𝗮𝗹 𝗧𝗶𝗽𝘀To effectively use the technical improvement strategy:1. 𝗗𝗿𝗮𝗳𝘁 𝗰𝗹𝗮𝗶𝗺𝘀 𝘄𝗶𝘁𝗵 𝘀𝗽𝗲𝗰𝗶𝗳𝗶𝗰 𝘁𝗲𝗰𝗵𝗻𝗶𝗰𝗮𝗹 𝗱𝗲𝘁𝗮𝗶𝗹𝘀 that show how the improvement is achieved, avoiding high-level abstraction. Examples of successful approaches include modifications to Internet protocols (DDR Holdings), specialized rendering methods (Research Corp.), and security profiles that protect against malware (Finjan).2. 𝗗𝗼𝗰𝘂𝗺𝗲𝗻𝘁 𝘁𝗵𝗲 𝘁𝗲𝗰𝗵𝗻𝗶𝗰𝗮𝗹 𝗽𝗿𝗼𝗯𝗹𝗲𝗺 𝗮𝗻𝗱 𝘀𝗼𝗹𝘂𝘁𝗶𝗼𝗻 in your specification-- clearly explain the deficiencies in prior solutions and provide concrete examples of the improvement, ideally with metrics or comparative data.3. 𝗖𝗼𝗻𝗻𝗲𝗰𝘁 𝗰𝗹𝗮𝗶𝗺 𝗲𝗹𝗲𝗺𝗲𝗻𝘁𝘀 𝗱𝗶𝗿𝗲𝗰𝘁𝗹𝘆 𝘁𝗼 𝘁𝗵𝗲 𝗶𝗺𝗽𝗿𝗼𝘃𝗲𝗺𝗲𝗻𝘁--ensure they reflect more than conventional computer operations and are limited to computer implementation.In my next post, I'll explore how tying software to a particular machine can establish patent eligibility.#patents #patenteligibility #softwarepatents

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Eli Mazour

Foley & Lardner LLP • 4K followers

I rarely print—let alone keep—hard copies of documents these days. But I still have my heavily marked-up copy of the USPTO’s 2019 Patent Eligibility Guidance. It’s been an indispensable tool for navigating the judicially-created Section 101 mess at the USPTO.The previous administration changed course with examination policies that drove up §101 rejections, particularly for AI-related inventions.That’s why the new December 4, 2025 memo from USPTO Director John Squires—along with the related August memo—is so significant. It’s a clear signal aimed at correcting that setback, especially for “critical emerging technologies” like AI.If this plays out as intended at the USPTO, applicants will still need to stay laser-focused on securing patents that can withstand even the toughest §101 scrutiny post-grant.

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Barnes & Thornburg LLP

26K followers

The USPTO’s new guidance on §101 in AI and software cases gives applicants — and their counsel — stronger footing to challenge weak rejections and frame claims around real technical advances.Read more: https://lnkd.in/g_xmxyMzAuthors: Steven D. Shipe | Scott Simmonds#USPTO #PatentLaw #AI #IP

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Erick Robinson

American Civil Accountability… • 10K followers

USPTO Dir. John A. Squires just made his second major move, and patent owners should take notice. Yesterday's decision in Interactive Communications v. Blackhawk Network (IPR2024-00465, Patent 11,488,451 B2) signals that expert testimony in IPR proceedings will now face real scrutiny.The Board issued a Final Written Decision finding all challenged claims unpatentable as obvious. Blackhawk requested Director Review, arguing the Board abused its discretion by crediting expert testimony that contradicted itself on material points. Dir. Squires agreed and did something unexpected: he reversed the decision and terminated the entire proceeding.The problem centered on petitioner's expert, Michael Hutton, whose cross-examination testimony about a critical technical modification went in circles. He testified that Exhibit 2050 did not represent his proposed modification, then reversed himself and claimed it did. The Board found portions of his testimony "not credible" yet still relied on it to support unpatentability. Director Squires called that an abuse of discretion, citing Federal Circuit guidance in Finesse Wireless that self-contradictory expert testimony can fail to meet the burden of proof.What makes this decision significant is what Dir. Squires did next. Rather than issue his own Final Written Decision or remand for reconsideration, he terminated the proceeding outright. His reasoning: once an expert's credibility collapses on material issues, it taints everything. The petition included additional grounds the Board never reached, also based on Hutton's testimony. Rather than let those proceed, the Director applied the principle from Pittsburgh Steamship that an unreliable witness on one issue deserves little weight on others.The procedural implications deserve attention. The order explicitly states it "does not constitute a final written decision under 35 U.S.C. § 318(a)." That matters for appealability. The original Board decision has been reversed, but there's no new final written decision to appeal from. Whether this creates a reviewability gap at the Federal Circuit remains an open question.For patent owners, this decision offers real encouragement. The Director demonstrated willingness to look beyond the Board's fact-finding when expert testimony doesn't hold up. For petitioners and their counsel, the message is clear: expert declarations need to withstand cross-examination without material contradictions. The Board might give you the benefit of the doubt, but Director Review adds another layer where credibility matters.This was Dir. Squires' first statement on how he views evidentiary standards in these proceedings. Worth watching whether this approach continues. IPR practice just got more demanding on expert testimony quality, and that's likely good news for patent owners who have been pushing for more rigorous scrutiny of obviousness challenges.#PatentLaw #USPTO #PTAB #IP #IPR #PatentLitigation #BrownRudnick

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Scott Grubman

Chilivis Grubman • 4K followers

Yesterday, the Florida AG announced a lawsuit under the Florida False Claims Act against textbook publishers McGraw Hill and Savvas, alleging that the companies violated the "most favored customer" clauses of their contracts. These clauses - which require contractors to offer the government any discount or other reduced pricing that it offers to other customers - are common and violations can lead to significant liability under the federal and state versions of the FCA. Read more here: https://lnkd.in/eqrn6vrJ#falseclaimsact #fca #quitam

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Odia Kagan

Fox Rothschild LLP • 24K followers

Texas is going for (data) broke(r): Revision to Texas Data Broker law signed by governor and effective September 2025. The revised act requires data brokers to: ◆ have a detailed privacy notice that is conspicuous with a description of the data collected, transferred, data of children and number of security breaches experienced. ◆ provide a link to a website that provides specific, prominently displayed instructions regarding how to exercise consumer rightshttps://lnkd.in/eYYP5qCP'Pic by Chat GPT

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Natasha Allen

Allen & Hatcher LLP • 2K followers

On August 4, 2025, the U.S. Patent and Trademark Office (USPTO) issued a new memorandum to patent examiners in Technology Centers 2100, 2600, and 3600. This memo offers focused guidance on assessing subject matter eligibility (SME) under 35 U.S.C. § 101 for software-related innovations, encompassing Artificial Intelligence (AI) and Machine Learning (ML) technologies.

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Ryan McCormick

M&B IP Patent Firm • 3K followers

Patent Pro Tip: don't break the chain when claiming priority ⛓️‍💥 When claiming priority back through multiple prior-filed patent applications, the reference to the prior applications is supposed to include all applications in the priority chain. ⛓️ This means referencing each and every application along the way. 🛣️ The MPEP provides a reminder about chains under US patent law: "The reference to the prior applications must identify all of the prior applications and indicate the relationship (i.e., continuation, divisional, or continuation-in-part) between each nonprovisional application in order to establish copendency throughout the entire chain of prior applications." MPEP 211.01(b)(II).When claiming priority, consider whether you have properly referenced ALL applications in the chain of priority so that you don't break the chain. ✅ #PatentProTips #patent #USPTO

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