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- with readers working within the Technology industries
1. USPTO Updates and Initiatives
AI Search Automated Pilot (ASAP!): Voluntary program using AI to provide up to 10 prioritized prior art references for certain utility applications. Impacts prosecution strategy and prior art analysis.
Examiner Performance Appraisal Plan (PAP): Interviews now credited per round of prosecution rather than per interview, potentially affecting examiner responsiveness.
Patent Prosecution Highway (PPH): Examination time reduced by 25 percent, signaling a push for efficiency.
After Final Consideration Pilot (AFCP) termination: Makes post-final interviews more challenging.
Open Data Portal: Provides public access to published application file wrappers, enhancing transparency and research.
Leadership change: John A. Squires appointed USPTO Director; emphasizes subject matter eligibility, AI integration, and examination efficiency.
2. Case Law Highlights
In Focus Products Group v. Kartri Sales, the court emphasized that strategic prosecution decisions, such as accepting restriction requirements, can limit claim scope. The case highlights the critical importance of precise claim drafting to avoid ambiguities that could affect infringement and enforcement, and it underscores the need for comprehensive IP strategies that account for both patent and trademark issues
In Mondis Technology v. LG Electronics, the Federal Circuit reaffirmed that the written description requirement is strictly enforced and that claim amendments must be fully supported by the specification. Examiner allowance does not create a strong presumption of written description support, and attorneys must be prepared to provide rebuttal evidence and expert testimony when challenges arise.
In Rideshare Displays v. Lyft, the court clarified that patent eligibility requires a technological improvement rather than merely an enhanced user experience. Substitute claims introduced during inter partes review must be fully supported by the original disclosure, and robust prior art searches coupled with careful claim drafting are essential to maintain enforceable patents.
3. USPTO Fee Changes
- Effective January 19, 2025: filing, search, examination, and maintenance fees increase 7.5–10%.
- Tiered surcharges introduced for continuing applications.
- IDS rules now require fees for large numbers of cumulative references.
- Early budgeting and filing planning are essential.
4. Supreme Court Review
- Declined certiorari in four major patent cases, leaving Federal Circuit rulings intact.
- Ongoing attention required for written description and PTAB jurisdiction developments.
5. Strategic Guidance
- Traverse restriction requirements when needed to preserve claim scope.
- Focus claims on technological improvements rather than user-facing features.
- Ensure all claim amendments are supported by the specification.
- Litigation strategies should anticipate ambiguities and written description challenges.
- AI integration and stricter standards indicate the need for greater precision and foresight in future practice.
Overall Summary: 2025 emphasizes strategic prosecution, precise claim drafting, strict written description compliance, and preparation for both litigation and AI-influenced examination processes. Attorneys who adapt proactively will better protect client innovations.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
