Director of the USPTO John A. Squires signed the first two patents of his tenure signaling the USPTO’s commitment to a “strong, robust, expansive, and resilient intellectual property system.”
In the weeks that followed, the USPTO issued the In re Desjardins Appeals Review Panel decision, later designated precedential, clarifying that improvements to the functioning of machine learning models can constitute practical applications under the governing subject matter eligibility framework. The decision reaffirmed that eligibility must be assessed carefully and consistently, with proper consideration of technological improvements reflected in the claims and specification.
Today, the USPTO is issuing two memoranda providing additional clarification regarding the use of Subject Matter Eligibility Declarations (SMEDs) under 37 C.F.R. § 1.132. These memoranda respond to questions raised by applicants, practitioners, and examiners about how evidentiary submissions may be used to address subject matter eligibility rejections, and they fulfill Director Squires’s commitment to provide guidance and assistance in this area.
The first memorandum, directed to the Examining Corps, explains that SMEDs are a voluntary option under existing Rule 132 practice. Applicants may submit a declaration to provide factual evidence relevant to the eligibility inquiry, such as evidence of technological improvement, the state of the art at the time of filing, or information demonstrating how a judicial exception is integrated into a practical application. The memorandum clarifies that, when a SMED is properly submitted, examiners must consider it as part of the evidentiary record and evaluate it using the preponderance-of-the-evidence standard. The memorandum includes several examples illustrating how such evidence may inform eligibility determinations consistent with the MPEP and applicable precedent.
The second memorandum, directed to applicants and practitioners, outlines best practices for preparing and submitting SMEDs. It explains that eligibility-related testimony is most effective when presented in a separate declaration focused solely on subject matter eligibility. Combining testimony on eligibility with testimony addressing other statutory requirements may complicate the record and hinder an examiner’s ability to evaluate the evidence. The memorandum notes that SMEDs should provide objective evidence tied to the claimed invention and should not be used to supplement the original disclosure.
Together, these memoranda clarify how applicants may provide factual evidence relevant to the eligibility analysis and how examiners should evaluate such submissions under longstanding practice. This guidance is intended to improve clarity, strengthen the examination record, and support consistent application of subject matter eligibility principles across technologies.
The memoranda take effect immediately.

The first memorandum can be found at:

https:/lnkd.in/emfazgJ2

The second memorandum can be found at :

https://lnkd.in/eMVfm-rW

Please contact me for any questions.

Starting on January 19, 2025 the USPTO will increase patent fees for filing and prosecution. The Notice is available in the USPTO web page (Fee-Setting web page) and in the Federal Register Notice. A detailed list of the increase fees is in the following spreadsheet.

Please contact me for additional information.

The United States Patent and Trademark Office (USPTO) recently proposed a new fee structure for fiscal year 2025, which includes significant increases in various patent fees.

One proposed change regards the introduction of new fees for continuation applications. If an applicant files a continuation application more than five years after the earliest claimed priority or benefit date, they will be subject to a surcharge $2,200 fee. This fee increases to $3,500 if the continuation application is filed more than eight years after the earliest benefit date. The USPTO does justify their approach on funding reasons — noting that continuations have a shorter patent-term and so the USPTO is unlikely to recoup the maintenance fee on the back end

Another change is the substantial increase in fees for Request for Continued Examination (RCE) filings. The USPTO proposes a 25-80% increase for second and third RCEs. At the same time, the USPTO has proposed a new fee of $500 for participating in the After Final Consideration Pilot Program 2.0 (AFCP 2.0). This program allows applicants to file a response after a final rejection, along with a request for consideration under the pilot program. 

The proposed fee structure also includes a 100% increase in fees for claims in excess of 20 and a fee increase for filing a Terminal Disclaimer after a final action or a notice of allowance moves that cost up to $800.

Additional fees:

1. Information Disclosure Statement (IDS) fees: The USPTO has proposed a new tiered fee structure for IDSs based on the number of references cited. This change aims to recover the costs associated with reviewing large IDSs and encourage applicants to file only the relevant documents.  The fee structure is $200 for >50 references; $500 for >100 references and $800 for >200 references. I’m sure we’ll be seeing an increase AI tools facilitate the pairing down of submissions to those that appear to have relevance without being cumulative.
2. PTAB trial fees: The USPTO has proposed increasing fees for inter partes review (IPR) and post-grant review (PGR) proceedings by 25%. These increases are account for the costs of conducting these proceedings.
3. Small and Micro entity status: Almost all of the fees include discounts for applications associated with small and micro entity status.

The proposed fee changes are expected to take effect in fiscal year 2025, which begins on October 1, 2024. However, the exact implementation date may vary depending on the feedback received during the public comment period and the time required for the USPTO to review and address the comments.

Written comments must be received on or before June 3, 2024, to ensure consideration. Comments must be submitted through the Federal eRulemaking Portal at https://www.regulations.gov/docket/PTO-P-2022-0033.

As part of the continued move toward total electronic processing, the USPTO will issue certificates of correction for patents electronically beginning January 30, 2024. The electronic certificate of correction will be the official certificate of correction issued under seal as provided for by the applicable statute. The USPTO will make electronic certificates of correction available in both the public and private views of Patent Center on the certificate’s date of issuance. Therefore, the public and the patent owner will be able to immediately view the official electronic certificate of correction. The USPTO will not mail a paper copy of the certificate of correction. Patents issued on or after April 18, 2023, are issued electronically, whereas patents issued before April 18, 2023, were issued on paper. All certificates of correction for patents issued on or after January 30, 2024, will be issued electronically, regardless of whether the patent was issued on paper or electronically. The other practices incident to issuance of a certificate of correction for notifying the public and the patent owner, as detailed in the Background section above, will not change. A notice will be sent to the patent owner to indicate that an electronic certificate of correction has issued. If the patent is associated with a Customer Number enrolled in the Patent Center Electronic Office (e-Office) Action program, the USPTO will send an email notification of the certificate of correction to the designated email addresses. Otherwise, the USPTO will mail a notification that the certificate of correction has issued to the correspondence address of record

Starting on January 17, 2024, non-provisional utility patent applications, with specification, claims and abstract in non DOCX filing formats, i.e., in PDF, will incur a surcharge of $400. An option for applicants to provide a backup PDF, or auxiliary PDF, version of their application with their DOCX version is available. There are no fees associated with providing the backup PDF. However, keep in mind the following issues:

The DOCX document that you upload (“D1”) will not control, because during the filing process the USPTO creates a different DOCX filed (“D2”) which will actually control. Therefore, if D1 and D2 are different, your patent will have errors which could no longer be corrected by requesting a certificate of correction, but can be corrected only by filing petition (which might or might not be granted).

The auxiliary PDF also will not control, therefore, filing it will not assure you that your patent will be free from USPTO errors.

What is the best way to proceed?

In my opinion (and in the opinion of many other practitioners) the best way to proceed is to continue to file all the applications in PDF format, paying the surcharge of $400. It would be much more expensive to correct a patent with error in chemical or mathematical formulas.

Of course this new USPTO surcharge is not applicable to National Stage Applications, which can still safely filed in PDF format.

Please contact me if you have any questions or if you wish to discuss this matter in more details.

The United States Patent and Trademark Office (USPTO) published a final rule in the Federal Register on August 3, 2020, that includes a fee for patent applications that are not filed in the DOCX format. The fee only applies to non-provisional utility applications and not to design, plant, or provisional applications.

The effective date of this new fee was most recently delayed in a final rule published in the Federal Register on December 29, 2022 and was scheduled to become effective on April 3, 2023. Through a new final rule, the USPTO is delaying the effective date of this fee until June 30, 2023.

The USPTO is committed to ensuring a successful and smooth transition to the DOCX format for patent applicants. You can find the full text of the final rule in the Federal Register and on the USPTO’s Patent Related Notices webpage

On April 18, the United States Patent and Trademark Office (USPTO) will begin issuing electronic patent grants (eGrants) rather than paper patents.

Part of this changeover involves modifying the Issue Fee Transmittal form (PTOL-85B) and its web-based version. The form no longer allows for advance orders of patent copies, because patents may be printed directly from Patent Center when issued. Advance orders for copies of patents issuing on or after April 18 will not be processed.

Additionally, since eGrants may be issued shortly after paying the issue fee and sooner than applicants are accustomed to, the PTOL-85B form includes a reminder to file any continuing application prior to issue-fee payment so as not to jeopardize copendency. The newly modified form can be found here

To further advance its information technology strategy of achieving complete, beginning-to-end electronic processing of patent-related submissions, the United States Patent and Trademark Office (USPTO) has issued a final rule to require that patent term extension (PTE) applications, interim PTE applications, and any PTE-related submissions to the USPTO be submitted electronically via the USPTO patent electronic filing system. This change reduces the administrative burden on PTE applicants and improves administrative efficiency by facilitating electronic file management, optimizing workflow processes, and reducing processing errors. The full text of the final rule is available at the Federal Register and on the USPTO’s Patent Related Notices webpage.

Beginning April 18, 2023, the U.S. Patent and Trademark Office (USPTO) is shifting towards issuing paper waste-reducing electronic patent grants (eGrants) to patent recipients—a new process that delivers the official copy of patent grants in an electronic format. A bound paper version as a ceremonial copy throughout a limited transition period will be provided, and then for a nominal fee thereafter. 

“By issuing eGrants, the USPTO is making considerable strides toward more environmentally-conscious operations at the USPTO,” said Kathi Vidal, Under Secretary of Commerce for Intellectual Property and Director of the USPTO. “Providing 21st century service to our stakeholders means shifting our processes to reflect 21st century policies. The eGrant process not only minimizes paper waste, but it also benefits stakeholders by reducing pendency and streamlining the process. It’s a win-win for the agency and for our customers.”

The eGrant process significantly decreases USPTO’s printing and mailing needs, potentially reducing patent pendency, and saving the agency nearly $2 million in annual printing and mailing costs. Further, under the new process, patent recipients will receive their electronic patent grant in PDF format on the day of issuance.

During the transition period, patent awardees will have access to the eGrant official copy in Patent Center and receive the bound paper version as a ceremonial copy. Patent recipients may still request USPTO certified copies and presentation copies from the USPTO’s certified copy center for an additional fee. Unlimited free copies of eGrants can also be printed from USPTO’s online Patent Center. The agency already provides electronic trademark registration certificates to trademark owners.

For more information, read the full Federal Register Noticeor visit the eGrant webpage on the USPTO website, where you can find our eGrant FAQ document and additional information.

Effective immediately, small entities are entitled to a 60% discount (up from a 50% discount) and micro entities are entitled to an 80% discount (up from a 75% discount). The new fee schedule can be found at https://www.uspto.gov/learning-and-resources/fees-and-payment/uspto-fee-schedule.

New penalties, however, are set forth for false assertions.

Under the new law, “ an entity that is found to have falsely asserted entitlement to a fee reduction under this section shall be subject to a fine, to be determined by the Director, the amount of which shall be not less than 3 times the amount that the entity failed to pay as a result of the false assertion, whether the Director discovers the false assertion before or after the date on which a patent has been issued.” It should be kept in mind that there is a duty to investigate entitlement to claim small entity status, which must be verified before small entity status is first claimed (e.g., when paying discounted filing fees), again when the issue fee payment is made, and again when each maintenance fee payment is made.