Updates on IP news from our global team!

Update on Examiner Interview Procedures at the USPTO

Through a change in Examiners’ Performance Appraisal Plan and with immediate effect, the USPTO has caused in impact on the availability of Examiner Interviews to applicants. While not publicly disseminated, notification of the change is being conveyed by Examiners during the scheduling of interviews by way of a notification such as this: “[P]lease be advised that Interview Practice at the USPTO has changed effective October 1, 2025. Specifically, time authorized for interviews is limited to 1 interview per new application/RCE. Additional time for interviews may be granted, but such additional time now requires SPE approval.” 

How to Handle “Close Calls” on § 101: 

USPTO Provides Reminders for Patent Examiners on Evaluating Subject Matter Eligibility

On August 4, 2025, the Deputy Commissioner of Patents, Charles Kim, sent a memorandum (hereinafter “August 4 Memo”) to the examining corps regarding the USPTO’s subject matter eligibility guidance. The August 4 Memo includes several important reminders pertaining to examining software-related inventions as articulated in the Manual of Patent Examining Procedure (MPEP) and other USPTO guidance. In particular, the August 4 Memo provides guidance on the following topics that arise when examiners assess Step 2A of the USPTO’s subject matter eligibility analysis: (a) reliance on the mental process grouping of abstract ideas; (b) distinguishing claims that “recite” a judicial exception from claims that merely “involve” a judicial exception; (c) analysis of the claim as a whole; and (d) consideration of whether a claim is directed to an improvement in the functioning of a computer or “any other technology or technical field,” or whether a computer is merely being used as a tool to perform the recited abstract idea (i.e., “apply it”). In addition, the August 4 Memo includes a discussion of when a subject matter eligibility rejection should be made.  

In our view, the August 4 Memo highlights several important issues that routinely confront patent professionals when prosecuting software-related applications.

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Patent Rights Retained For

“First-To-File” Inventor in First Review of AIA Derivation Proceeding

On August 26, 2024, the U.S. Court of Appeals for the Federal Circuit (Federal Circuit) affirmed a ruling made by the Patent Trial and Appeal Board (“Board”) against a first-inventor, second-filer claim in its first review of a derivation proceeding.

In 2011, the Leahy-Smith America Invents Act (AIA) was passed, transforming the US patent system from “first-to-invent” to “first-to-file”. Previously, under the first-to-invent system, an inventor could obtain a patent despite not being the first to file a patent application directed to the invention, provided that the inventor could prove through sufficient evidence that he/she conceived of the invention and reduced it to practice prior to the filing date of the patent application. Following enactment of the AIA, there remains a provision for a “first-inventor second-filer” to obtain a patent if he/she can prove that the “first-filer” derived the invention from the “second-filer”. In order to fulfill this requirement, facts must be presented that prove the “second-filer” conceived of the invention and communicated the invention to the “first-filer” prior to the filing of the patent application. The first-filer may overcome this assertion by proving they independently conceived of the invention.

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Federal Circuit Issues Simple Ruling on Patent Eligibility That Appears to Contradict Previous Decisions

Patent eligibility, as defined by 35 U.S.C. § 101, includes new and useful processes, machines, manufactures, and compositions of matter. Various Supreme Court decisions have sought to define the scope of this statute, most notably in Alice Corp. v. CLS Bank Int'l, which provided the current two-step framework for determining patent eligibility. The first step involves determining if the claimed subject matter is directed towards a judicial exception, such as an abstract idea, and the second step involves determining if the claims recite significantly more than the judicial exception.  The Alice framework has been used in many court cases over the past decade, including a controversial decision issued in August of this year by the United States Court of Appeals for the Federal Circuit (CAFC).  

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AIS Designs Co. Prevails in Home Design Copyright Litigation

Attorney Califf T. Cooper, of Osha Bergman Watanabe & Burton LLP, said, “Protecting the work and intellectual property of companies like AIS Designs protects the integrity of the design and building professions. The jury’s decision sent a clear message: Taking copyrighted architectural designs has real consequences.”

www.obwb.com