Consider whether you should change your patent prosecution strategy. There are many changes at the United States Patent and Trademark Office. These include robot examiners, new acceleration programs, changes to the way the examiner corps is evaluated, and many other changes. However, a more subtle change is that the office is more likely not to reject applications for want of patent-eligible subject matter. For applicants who have battled the office since the Bilski, Mayo, and Alice decisions, this is welcome news. Consider if this new direction changes your filing strategy or your patent prosecution strategy for AI inventions or any computer-implemented inventions.
What Happened – USPTO Shifts on Section 101
Mr. Squires, the brand new director of the USPTO, went on a tear in his first week. He joined an Appeals Review Panel (“ARP”) to review a decision by the Patent Trial and Appeal Board (PTAB) in which the administrative judges considered the examiner’s rejection and introduced their own new ground for rejection — subject matter eligibility.
The ARP panel revisited the rejection and found the claims patent eligible under the framework in MPEP Step 2A, Prong Two. This seems to be the way the wind is blowing at the USPTO. See the 2025 Aug memo. The applicant argued that the claim added more. Specifically, an improvement in the functioning of a computer or an improvement to other technology. Patent agents know that examiners routinely don’t consider arguments here.
The new commissioner, his deputy, and the chief APJ reviewed the Enfish case and pointed out that improvements in technology could be in software. Again, something examiners dismiss. This panel found the claims did add more, including “improvements in training the machine learning model”. “The Specification also recites that the claimed improvement allows artificial intelligence (AI) systems to use less of their storage capacity and enables reduced system complexity.”
They made two other comments. One, about injecting the 101 rejection into a 103 appeal. You can read this yourself if you are interested. And then they opined that 101 should not be the main tool to limit the scope of patent claims. “This case demonstrates that §§ 102, 103 and 112 are the traditional and appropriate tools to limit patent protection to its proper scope. These statutory provisions should be the focus of examination.”
For more details, see Ex Parte Desjardins, Appeal 2024-000567, Application 16/319,040
The Effect After One Month is Evident in the Data
Dennis Crouch of Patently-O reports that patent-eligibility decisions at the PTAB of the USPTO have changed dramatically in October. The “instances where the PTAB introduces a 101 rejection that was not part of the original appeal” have “plummeted to just 3% in October 2025.” The cases where the PTAB administrative judges reverse the examiner’s rejection show a more interesting signal. For the data and analysis, subscribe to Patently-O.
Our Analysis – Computer‑implemented and AI Inventions Face Fewer Eligibility Rejections
The administrative patent judges have received and implemented the direction of the new director of the USPTO. It is unclear what motivated them, the direction not to jump to section 101, the comment that when invoking 101, this should be done diligently, or the statement “categorically excluding AI innovations from patent protection in the United States jeopardizes America’s leadership in this critical emerging technology”?
However, ultimately, it doesn’t matter to you as an applicant. Act now. At the moment, you have a better chance of getting an allowed patent application for computer-implemented inventions. This includes AI but also inventions. So, we recommend you:
- Adjust your decision model on patent filings
- File continuing application
- Respond to office actions
- File new patent families
There is, however, no free pass here. You still must present proper claims or address every rejection of the patent office. This does take a lot of careful writing. Just know that for the moment, there is a better return on investment. Indeed, there is a way out of the confusion at the USPTO.
Conclusion
If you would like to discuss protecting your invention with a patent application or your patent prosecution strategy, please contact us.
