The past two months have been active in the world of patent eligibility. There continues to be a craving for clarity, but what will that mean, if anything, at the courts?
Director Squires Sends a Message
U.S. Patent and Trademark Office (USPTO) Director John Squires used Ex parte Desjardins to make a point regarding a Google DeepMind artificial intelligence (AI) patent, holding that Section 101 was not the right place to challenge claim clarity, scope or inventiveness. Instead, those belong under Sections 102, 103 and 112:
However, it is with this view that the panel's sua sponte action is most troubling, as it eschewed the clear teachings of Enfish, and instead substituted only a cursory analysis that ignored this well-settled precedent. Panels should treat such precedent with more care, especially when acting sua sponte.
At the same time, the claims at issue stand rejected under § 103. 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 these reasons, we determine that although independent claim 1 may recite an abstract idea, it is not directed to an abstract idea. Instead, we determine that independent claim 1, when considered as a whole, integrates an abstract idea into a practical application. Our analysis is also applicable to independent claims 18 and 19, and all pending dependent claims 2-6, 8-17, and 20.
That framing matters. Director Squires, it seems, attempts to narrow Section 101 back to a true gatekeeping role, rather than the broader rejection reasoning that's frustrated innovators.
For applicants, it means arguments can focus on what the invention does and how it improves technology. It suggests that AI filings, which have seemed like eligibility landmines, might get some traction during examination.
What will happen when those patents are asserted at the district court? Well, that is another story.
The USPTO's Memo and Public Remarks Reinforce the Shift
Director Squires followed Desjardins with a formal USPTO memo and public remarks at the American Intellectual Property Law Association (AIPLA), both underscoring that examiners should show restraint with Section 101. The guidance explicitly acknowledges that AI-based inventions often involve abstract concepts, but that's not the end of the inquiry. Instead, what matters is how the technology is applied.
For practitioners, this means two things:
- Drafting Discipline Should Be Rewarded. Claims that explain system architecture, training methodology or specific processing steps are more likely to pass eligibility muster.
- Office Actions May Evolve. Examiners now have cover to move borderline cases forward under prior-art analysis rather than burying them in eligibility rejections.
For businesses, the impact is equally important. The message from the top of the USPTO is explicit:
As to the technological revolution du jour, today it's AI. Tomorrow, who knows what form this amazing shape shifter we call innovation will take.
The doors to the USPTO – let me restate that – the doors to America's Innovation Agency are wide open. Even when no one else's are. We are open for business. Please come.
As stated, the doors are open – or open at the USPTO, at least.
Congress Dusts Off the Patent Eligibility Restoration Act
Congress again waded into Section 101 reform. The Senate Judiciary Committee's Oct. 8, 2025, hearing on the Patent Eligibility Restoration Act (PERA) featured a lot of what we have heard before.
- Sen. Thom Tillis (R-N.C.): "I will not stop shining a spotlight on the need for patent eligibility reform."
- Sen. Adam Schiff (D-Calif.): "In the middle of the artificial intelligence technological revolution, clarity and stability around the proper interpretation of Section 101 is necessary to ensure that America continues to win the international innovation race."
- David Kappos, former USPTO director and Under Secretary of Commerce for Intellectual Property: "The U.S. is living with doctrinal chaos in patent eligibility."
Like many of the previous hearings, most voices were in unison: Unpredictability is deterring investment and so forth. Supporters see PERA as a necessary reset, but there are certainly critics. They fear a flood of low-quality patents that'll drown small businesses and lead to unnecessary expense for businesses of all sizes.
Interestingly, on Nov. 14, 2025, Cleveland State University College of Law hosted its IP+ Conference. Judge Richard Linn and retired Judge Kathleen O'Malley, both of the U.S. Court of Appeals for the Federal Circuit, expressed their opinions that it will take Congress to address the Section 101 patent eligibility controversy. And while Judge O'Malley expects movement in the next 18 months, she also expects it to be imperfect. (Read Ryan Davis' full Law360 article; Judge O'Malley has spoken publicly on the Federal Circuit's effort to address patent eligibility confusion, calling it "absurd" that the U.S. Supreme Court won't provide further guidance.)
If PERA (or something like it) advances, the calculus for filing and maintaining software and biotech patents could change quickly. Companies should be cataloging which of their applications would benefit from a broader eligibility regime.
Hope in the Eternal City (Let's Talk About Serie A)
On the other field of play, Roma are at the top of Serie A. The league has been chaotic: Napoli inconsistent, Juventus unconvincing and Inter showing flashes of dominance. Roma's early success, however, feels unsustainable unless they find some improved finishing. Despite that, there's a sense of belief and hope not felt since the Spalletti years.
There is an even bigger surprise than Roma at the top of the table: Fiorentina at the bottom with only five points. There is a lot of time left, but seeing Fiorentina drop to Serie B would be a shock.
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