By Kevin E. Noonan –

The alacrity with which the Patent Trial and Appeal Board (PTAB) came to the same conclusion in its latest priority determination in favor of the Senior Party in interference No. 106,115 that it had almost eleven months ago precluded an assessment of Broad’s Brief in Opposition to CVC’s Opening brief or both Parties’ Reply briefs,* but relevant portions of those submissions can be referenced for both Parties consistent with the arguments made throughout this interference and related Interference No. 106,048.

Broadly, the Broad’s position is consistent with its argument, expressed more directly in Interference No. 106,048, that the complexity of performing CRISPR in eukaryotic cells renders any conception incomplete unless and until there is a successful reduction to practice.  That argument faded in the ‘048 interference (when application of the “two-way obviousness test” sufficed for Broad to prevail; see “PTAB Decides CRISPR Interference in Favor of Broad Institute – Their Reasoning“), and Broad did not explicitly rely on that concept (which gained traction during the heyday of obtaining patents in isolated gene-encoding nucleic acids) in the current interference (at least not by name).  But it remains at the heart of Broad’s arguments, now couched in assertions that CVC’s conception was incomplete due to failure to reduce to practice prior to Broad’s success (the success of this misconception was at least part of the basis for the Federal Circuit to vacate and remand the PTAB’s earlier judgment in Broad’s favor).  This argument runs through their submissions in both interferences, which is not surprising in view of the timeline of actual reduction to practice for the parties.

The Board’s decisions show that another Broad argument resonated as well, wherein in addition to having reduced eukaryotic CRISPR to practice a few months earlier Broad argued that the several labs that used the sgRNA component of CRISPR undisputedly conceived by CVC:

were of greater than ordinary skill in the art, and thus these labs achieving actual reduction to practice did not show that the person ordinary skill in the art would have been able to do so by being informed of this species in conjunction with the capacity to express RNA (e.g., using the U6 promoter) and Cas9 protein (using recombinant expression known in the art for over a generation) in eukaryotic cells.  Broad was able to use the efforts by CVC and the time taken to achieve actual reduction to practice, as well as the litany of purported uncertainty by those CVC inventors gleaned by their improvident statements on the record, to convince the PTAB (once again) that Broad’s actual reduction to practice provided priority.  This argument, negating CVC’s conception, also was once again used to overcome CVC’s derivation arguments, because if several components other than sgRNA were required then Dr. Marraffini’s disclosure to the Broad inventors could not be sufficient to support their derivation argument.

CVC for its part argued that the critical conception was the sgRNA, using the historical fact that until that species was known (from its disclosure) the art did not evince the capacity to achieve CRISPR in eukaryotic cells.  The timing between Dr. Marraffini’s disclosure to Broad’s actual reduction to practice supported the conclusion that this species played some role in the achievement; this conclusion was also supported by labs other than Broad’s that used sgRNA acknowledging CVC’s contribution to their achievement.  The PTAB did not, on the other hand, seem to give the same type of credence to evidence that Broad’s inventors were themselves having difficulties achieving eukaryotic CRISPR until the sgRNA species was disclosed to them (including multiple instances of Zhang himself and his students evincing sentiments of failure prior to obtaining their invention from Dr. Marraffini (“the results were ‘nonspecific’” (Zhang); “wondering whether “‘other factors need to be identified’ for a working CRISPR system” (Lin); “Zhang’s experiments ‘all failed’; ‘d[id] not work in human cells; and had ‘fail[ed] to induce genome modification’”; “‘it was really a pity’ that Zhang’s lab ‘did not work it out before seeing [CVC’s] paper.’” (Lin)).  Also unavailing was the history (and Broad’s reliance on it, for example in its Supplemental Priority Statement filed under PTAB Order) that showed their construct for eukaryotic CRISPR:

(very different from CVC’s sgRNA) was not the species used to support actual reduction to practice more than six months after being submitted as part of an NIH grant proposal, where such actual reduction to practice using sgRNA took only a few weeks.

Unmentioned in all the briefing is the simple argument that, taking heed of Broad’s assertions in both the ‘048 and ‘115 interferences the complexities of eukaryotic cells made it just sufficiently less likely for a three component complex (Cas9, crRNA, and tracrRNA) to form in such cells than for a two component complex to do so (sgRNA and Cas9).  The oligonucleotide linker joining the crRNA and tracrRNA species in CVC’s sgRNA would have this advantage over the more complicated construct disclosed in their January 2012 NIH grant proposal by Broad, wherein when expressed the tracrRNA and crRNA would need to coalesce independently with Cas9 to form an active CRISPRR complex.

The question before the Federal Circuit will be whether the PTAB heeded the earlier panel’s appreciation that the Board had not properly considered the role of earliest conception followed by diligence towards reduction to practice, or be convinced that the complexities of achieving eukaryotic CRISPR were sufficient that only actual reduction to practice will suffice.  It might be fruitful for the Court to consider whether there is a “losing the forest for the trees” aspect of the PTAB’s analysis, unsurprising in view of the vigor with which Broad made its arguments asserting eukaryotic cell complexities, and whether the evidence is more consistent with sgRNA being the critical component of the CRISPR complex that permitted successful CRISPR cleavage in eukaryotic cells.

*Such analyses are forthcoming in perhaps more abbreviated form for completeness.

By Donald Zuhn –

Last week, Mexican law firm OLIVARES reported that Mexico had published amendments to the Federal Law for the Protection of Industrial Property (FLPIP) on April 3, 2026, that introduce changes that will impact patent filing and prosecution strategies in that country.  The report notes that the amendments incorporate mechanisms that are commonly used in other jurisdictions and introduce new procedural tools aimed at increasing flexibility, legal certainty, and efficiency in the Mexican patent system.

Among the changes that will affect patent practice in Mexico are:

• Restoration of priority rights – allows applicants to restore priority rights within a two-month period following the expiration of the original deadline (i.e., 12 months for patents and utility models, and 6 months for industrial designs).  The report notes that this change aligns Mexico with international practices that provide corrective measures for priority claims.  Significantly, OLIVARES noted in a separate alert that the amendments to the FLPIP did not address the time limits applicable to national phase entries of PCT applications – but suggested that the recent amendments may open the door for Mexico to review and potentially lift the restrictions currently in place with respect to national phase applications.

• Provisional patent applications – allows applicants to secure an early filing date with reduced formal requirements, with the applicant then filing a complete application within a non-extendable 12-month period.  Mexican provisional applications may not claim priority from any prior application, will not be published, and will not be subject to examination.

• Priority documentation – allows the Mexican Institute of Industrial Property (IMPI) to require the submission of a certified priority document and its Spanish translation within five (5) business days following the expiration of the current term (i.e., three months from the filing date).

• Restoration of procedural rights – allows applicants to request reinstatement of rights lost due to missed deadlines, including the failure to respond to office actions or pay grant fees.  Requests for reinstatement must be filed within fifteen (15) business days from the expiration of the missed deadline (counted from the business day following the expiration of the missed deadline), together with the previously omitted requirement and payment of the corresponding official fee.  If the request is accepted, the IMPI will allow the application to continue prosecution.  The report notes that this change represents a shift from the prior system, where abandonment was final and irreversible.

• Reduced prosecution timelines and number of office actions – in an attempt to accelerate prosecution at the IMPI, this change establishes a maximum period of one year for the issuance of a final decision in patent, utility model, and industrial design applications, once substantive examination begins.  If after the one year period there has been no resolution, the applicant may request the issuance of a mandatory resolution through a newly created specialized technical committee that is appointed by IMPI’s board of directors.  The one-year maximum prosecution period will apply for patent applications filed after the amendments were published.  However, applicants having applications that were filed and pending prior to publication of the amendments can still apply for a mandatory resolution once the specialized technical committee has been assembled.

Regarding the above change, OLIVARES suggested that:

While the effort to reduce prosecution timeframes is recognized, there is general uncertainty on the feasibility for the Mexican PTO to handle this significant increase in their workload and if this shortening of timeframes could provoke a massive filing of requests for mandatory resolutions by applicants.  There is also concern that there will be a decrease in the quality of the substantive office actions in view of the reduced timeframes.

In addition to the one-year maximum prosecution period, OLIVARES noted in a separate alert last month that an amendment to the administrative regulations that was published in the Mexican Official Gazette in March reduces the number of substantive office actions from four to two for patent and utility model applications.  A third office action that either allows or denies the application will follow the previous two.  The administrative amendment reducing the number of office actions took effect on March 12, 2026, but does not apply to applications that were filed prior to the effective date, which will continue to be examined under the rules in force at the time the application was filed.

• Third-party observations – allows for the submission of third-party observations for utility model and industrial design applications within a two-month period from publication.  Under the prior system, third-party submissions were limited to patent applications.

The report notes that the changes took effect on the day after their publication and that pending applications would continue to be prosecuted under the legal framework that was in force at the time those applications were filed.  One of the alerts also notes that further developments are anticipated, as the implementing regulations of the new IP law are still pending issuance and are expected to be published in the near term.

OLIVARES has provided additional information regarding the amendments to the FLPIP on its website:

• “Amendments to Mexico’s Intellectual Property Law: Principal aspects for patent practice.“
• “Mexico introduces new corrective mechanism for priority documentation.“
• “Reinstatement of rights following missed prosecution deadlines.“
• “Mexico introduces provisional patent applications.“
• “Mexico introduces restoration of priority rights for patent, utility model and industrial design applications.“
• “Mexico reduces prosecution timelines.“
• “New Technical Committee Mechanism.“

The Decision on Priority

By Kevin E. Noonan –

On March 26, the Patent Trial and Appeal Board, without holding an oral hearing and despite a rather sharply worded opinion by the Federal Circuit vacating and remanding its earlier priority decision (see “Regents of the University of California v. Broad Institute, Inc. (Fed. Cir. 2025)“), granted priority in Interference No. 106, 115 to Senior Party The Broad Institute, Harvard University, and MIT (collectively, “Broad”) over Junior Party the University of California/Berkeley, the University of Vienna, and Emmanuelle Charpentier (collectively, “CVC”).  To the extent that the Federal Circuit held that the Board erred in the manner in which the evidence was considered and settled interference law applied, this Decision on Priority shows little evidence of any inclination by the Board to reconsider either aspect of its prior analysis, once more seemingly being content to focus on the trees at the expense of the forest.

Procedurally, the Decision properly imposes the burden on CVC to show earlier conception by a preponderance of the evidence.  The Decision delves deeply into the details of the methods for achieving eukaryotic CRISPR, assessing that evidence and finding the same indications in favor of Broad directed to their earlier reduction to practice swaddled in the language of conception (albeit avoiding the “incomplete conception” terminology found in their first priority decision).  The Board rejects as unsupported by the evidence that achieving eukaryotic CRISPR would be “straightforward,” as some evidence and testimony asserted, once the sgRNA species was disclosed, the Decision stating that:

[W]e find that one of ordinary skill in the art would have been a practicing Ph.D. research scientist who would have known about the routine techniques and methods available but would have been less capable than the Zhang, Church,  Kim, and Joung labs to reduce an embodiment of Count 1 to practice,

the Board apparently being convinced by Broad’s argument that the laboratories that quickly reduced eukaryotic CRISPR to practice (asserted by CVC as evidence that the methods used were “routine and well-known to the worker of ordinary skill) were not persons of ordinary skill but rather persons having sufficiently extraordinary skill to disqualify their efforts for the role attributed to them by CVC, despite the contemporaneous attribution to CVC of the methods for successfully performing CRISPR cleavage in eukaryotic cells.  Paradoxically the Board’s appreciation that the Broad inventors may have been of greater than ordinary skill did not provide an explanation for why they were able to achieve actual reduction to practice of eukaryotic CRISPR slightly more rapidly (only a matter of a few months) than the CVC inventors were able to achieve.

Somewhat ironically, the Board once again focuses on statements by the CVC inventors regarding their difficulties in achieving CRISPR cleavage in eukaryotic cells, supported in this approach by their understanding that:

The court stated that “[t]he Board erred in its analysis by failing to consider routine methods or skill, and, instead, focusing almost entirely on Regents’ scientists’ statements about perceived experimental difficulties and doubts about success,” but the court did not say that the Board erred in considering the CVC inventors’ statements and the extent of their research or experimentation at all in the determination of the preponderance of the evidence of conception.

But the Board seemingly ignored similar references to the frustrations of failure emanating from the Broad lab prior to the disclosure of sgRNA species by Dr. Marraffini (see CVC Opposition to Broad Opening Brief, which recites multiple examples of similar frustrations that seemed to disappear after Dr. Marraffini’s disclosure, including multiple instances of Zhang himself and his students evincing sentiments of failure prior to obtaining their invention from Marraffini (“the results were ‘nonspecific’” (Zhang); “wondering whether “‘other factors need to be identified’ for a working CRISPR system” (Lin); “Zhang’s experiments ‘all failed’; ‘d[id] not work in human cells; and had ‘fail[ed] to induce genome modification’”; “‘it was really a pity’ that Zhang’s lab ‘did not work it out before seeing [CVC’s] paper.’” (Lin)).  The Board justifies its focus on any changes in the CRISPR methods during development by CVC as being evidence of incomplete conception (albeit avoiding that particular sobriquet) because:

Count 1 includes the ability of the CRISPR-Cas9 system to cleave or edit DNA in the eukaryotic cell to alter gene expression, we consider any additional requirements that affected the ability of the CRISPR-Cas9 system to cleave or edit DNA in the eukaryotic cell to alter gene expression to be a substantive aspect of the inventors’ conception of an embodiment within the scope of Count 1.

And there are other assertions in the Decision indicating a particular perspective when considering  the relationship between conception and reduction to practice that seem inconsistent with the Federal Circuit’s concerns with the Board’s prior assessment of priority, for example “[t]he need for seven months of diligent work is not consistent with the CVC inventors having  conceived of and described a complete system that would have required only ordinary skill, without extensive research or experimentation, to reduce to practice.”

In addition, CVC’s arguments suffered from the Federal Circuit’s decision not to overturn the Board’s determination that CVC’s earliest provisional applications (U.S. Provisional Application Nos. 61/652,086, P1, and 61/716,256, P2) did not provide a constructive reduction to practice of eukaryotic CRISPR (ironically because they did not disclose an actual reduction to practice of eukaryotic cell CRISPR), as illustrated in this graphical representation:

The Board’s decision is based on Broad’s earlier evidence of actual reduction to practice and the later filing date of CVC’s U.S. Provisional Application No. 61/757,640 (which was credited with constructive reduction to practice for containing experimental evidence of actual reduction to practice).  Underlying this analysis is a sub silentio acceptance of Broad’s long-standing argument that the complexity of performing CRISPR in eukaryotic cells raised a “simultaneous conception and reduction to practice” standard as applied but not enunciated in the Decision.

The Decision relies as well on certain structural differences in the sgRNA species developed by Broad, which could be relevant to their success in achieving actual reduction to practice according to Broad, as shown in these illustrations wherein the top illustration was used in vitro (CVC) and the bottom in vivo (Broad):

The Board apparently disregarded the history of the efforts to practice CRISPR cleavage in eukaryotic cells, which showed various variations and timelines of success, but that the one thing that all the labs had in common was using sgRNA to do so, a species unrecognized by any of these groups (including the Broad) prior to CVC’s disclosure of it.  As pointed out in CVC’s Opposition to Broad’s Opening Brief on Remand, prior to Dr. Marraffini’s disclosure on June 26, 2012, the RNA components of CRISPR used by Broad (as disclosed in the January 12, 2012 NIH grant relied upon for Broad’s additional priority claim; see Parties Supplemental Priority Statements on Remand) had the structure:

as compared with the sgRNA invented by CVC and disclosed by Dr. Marraffini and used substantially identically by Broad and the four other labs identified and relief upon by CVC:

Regarding derivation, as in its earlier Decision, the Board adopts the position that its determination regarding conception suffices to reject CVC’s arguments about derivation.  By determining that CVC did not have sufficiently complete conception to be entitled to priority it follows (for the Board) that CVC’s inventors could not have disclosed the invention sufficiently for the Broad inventors to have derived it.

This Decision, like the one before it, will no doubt be appealed and that will give the Federal Circuit the opportunity to inform the PTAB, and the rest of us, whether its earlier decision and the instructions contained therein were followed or disregarded by the Board in arriving at substantially the same decision arrived at four years ago (see “PTAB Grants Priority for Eukaryotic CRISPR to Broad in Interference No. 106,115“).  Ultimately, the question will be whether in the Board’s reconsideration of its determination of priority, the Federal Circuit believes that reconsideration of  the issue of conception was performed “under the proper application of the legal framework.”

There is likely to be some comfort the CVC inventors can take from this outcome:  whether the party who ultimately gets priority to the patents for this invention is remembered in the future, Jennifer Doudna and Emmanuelle Charpentier will be always remembered for winning the 2020 Nobel Prize for Chemistry for CRISPR.

By Donald Zuhn –

Earlier this year, Argentine intellectual property law firm Berken IP reported that Argentina had signed a Reciprocal Trade and Investment Agreement with the United States that included several commitments to harmonize its intellectual property system with international standards.  Among those commitments were “expeditiously” repealing the Guidelines for the Examination of Chemical-Pharmaceutical Patent Applications; submitting the Patent Cooperation Treatyto Congress for consideration and ratification vote by April 30, 2026; submitting the Budapest Treaty (Deposit of Microorganisms), Geneva Act of the Hague Agreement (Industrial Designs), Madrid Protocol (Trademarks), Patent Law Treaty, and UPOV 91 (Plant Varieties) for consideration and ratification vote before the end of 2027; and significantly reducing the patent backlog and pendency, including for pharmaceutical and biotechnological inventions, at the Instituto Nacional de la Propiedad Industrial (INPI).

Last month, Argentine law firm Marval O’Farrell Mairal reported that the 2012 patentability guidelines for pharmaceutical inventions had been abrogated.  Marval noted that “[i]n a significant policy shift,” the Argentine Executive Branch had repealed the guidelines, “marking a major turning point in the country’s patent landscape.”  According to the Marval report the 2012 pharmaceutical guidelines had introduced strict exclusions, denying patent protection to a wide range of subject matter, including crystalline forms, enantiomers, selection inventions, formulations, salts and esters, and Markush claims.  Marval noted that the new regulatory framework would apply to pending patent applications as well as to future patent applications.  However, Argentina’s new regulations will include a safe harbor provision, which will protect third parties that commercialized products during the validity of the former guidelines.  Thus, patents granted under the new regulations, which cover pharmaceutical products already marketed locally by third parties, cannot be used to prevent continued commercialization of such products or to pursue damages.

Reports regarding the March 18, 2026 repeal of the 2012 pharmaceutical guidelines were also issued by Berken IP (announcement), the LATAM team of European IP firm UNGRIA (announcement), and Latin American IP firm Daniel Law (announcement).

By Dunstan Barnes, Catalina “Caty” Medrano, and Tristan Morgan –

On March 12, 2026, U.S. Patent and Trademark Office Director John A. Squires announced new supplemental guidance regarding examination of design patent applications related to computer-generated interfaces and icons.  Prior to this announcement, the U.S. was lagging behind three of the other four major design jurisdictions (the European Union, Japan, and the Republic of Korea) in protecting digital designs for augmented and virtual reality.  Until this announcement, apart from designs protecting typefaces and fonts, U.S. law required design patents to be tied to—and illustrated as being on or part of—a physical article of manufacture.  This limited potential protection for designs that are entirely virtual or projected.  This gap in protection created strategic challenges for businesses investing heavily in immersive technologies.  In light of the new guidance, applicants may now protect designs by identifying, but not necessarily depicting, the article of manufacture for the design.

Brief Background of Graphical User Interfaces (GUIs)

The earliest interactive display may date back to the 1950s, when Canadian Navy engineers integrated radar displays with trackball-operated cursors.  While this pioneered the concept of direct manipulation through use of a display, it preceded the modern desktop standard by decades.  During the 1960s and 1970s, computers remained specialized tools for professional environments.  Text-based interfaces where users typed commands to execute processes were the norm, with most system design focused on hardware optimization and backend computational logic.

The landscape shifted dramatically in the 1980s with the release of the Apple Macintosh.  As the first commercially successful mass-market computer featuring a GUI, the Macintosh became a catalyst for a new era of design centered on human interaction and user-friendliness.  By the 1990s, the rapid adoption of personal computers in homes and small businesses introduced a user base with diverse backgrounds and less technical training.  This shifted the market toward visually intuitive interfaces.  As graphics technology advanced, vibrant color schemes and smooth transitions became essential benchmarks of a successful system.

Today, this paradigm remains the gold standard for interface development.  Modern innovations, such as Apple’s pinch-to-zoom gestures and Google’s Material Design, are direct results of this evolution toward natural, high-fidelity interaction.

As we move forward into the future, designers have begun to develop GUIs that are not necessarily tied to a “display screen,” since they may be projected or virtual in nature.

Background of U.S. GUI Protection

The origin of U.S. design patent protection for graphical user interfaces is often traced back to Ex parte Strijland, 26 U.S.P.Q.2d (BNA) 1259 (B.P.A.I.), in which the applicant sought to protect the “ornamental design for an icon for information or the like, as shown and described.” (claimed icon shown below).

Despite affirming the rejection of the applicant’s design, the Board provided a roadmap as to how future applicants could seek to protect GUI designs, including showing an article of manufacture (such as a computer or display screen) in broken lines.  The Strijland holding indicated that computer-generated icons are patent eligible and afforded protection under 35 U.S.C. § 171 so long as the specification demonstrates, including specifically through drawings, the design applied to an article as required by 35 U.S.C. § 171 and by 37 CFR § 1.152.  By 1996, the USPTO had adopted the Strijland roadmap as its approach for assessing the subject matter eligibility of virtual designs.

Current Laws in the European Union

On May 1, 2025, the European Union—covering 27 member states—made significant changes to its design protection system.  While the different changes are set to take effect (or already have taken effect) on different dates, one aspect of the new regulation that is in force already has expanded the definition of “product” to include “digital and non-physical creations.”  Even though the existing EU design law allowed for protection of such designs as icons, GUIs, and fonts without reference to a display screen, the new changes more clearly allow applicants to protect wholly virtual components.

As such, as of the publication date of this article, each of the following categories of design are protectable by a Registered European Union Design:

• Graphic elements: logos, graphic symbols, icons, and graphic works

• Digital interfaces: GUIs, typefaces and fonts, application animations

• Virtual environments: objects in video games, metaverse products, and virtual spatial configurations

• Physical presentations: packaging, sets of articles, and interior arrangements (e.g., store designs)

Even before the new changes, many graphical designs were protectable without need for reference to a display screen or article of manufacture.  For example, Registered European Union Design No. 015019470-0001, filed in April 2023, is directed to a 3D or animated character without reference to a display screen or article of manufacture.

Current European Union design laws tend to provide more flexible protection for graphical designs than many other jurisdictions.

Current Laws in Japan

Prior to April 2020, Japanese design law limited protection for GUI designs to visual designs that were stored locally and shown on an electronic device, such as a PC or smartphone.

Starting on April 1, 2020, Japan’s Design Act allowed broader design protection for GUIs, including images that are not stored locally (e.g., images that are found on the internet and not saved to a computer) as well as GUIs that are projected onto roads or walls.  Note that Japan’s Design Act still requires a functional relationship between the GUI and the article of the design.

For example, six months after the new provisions took effect, the Japan Patent Office (JPO) granted Japanese Design Registration No. 1672383, which was filed on April 1, 2020, the date that the changes to Japan’s Design Act came into effect.  This Japanese design registration is directed to a vehicle information display image.  In particular, the design is directed to several images that may be projected onto a road surface from an image protection apparatus on a vehicle, such as a motorcycle.  The images have a functional relationship between the projected GUI and the article of the design—for example, the projected GUI may be used to indicate to nearby drivers that the vehicle intends to change direction.  The projected GUI may also help the driver to visually recognize the road surface condition around the vehicle, and may help other drivers to be aware of the presence of the vehicle due to the illuminated light on the road surface.

Prior to the changes to Japan’s Design Act, this GUI design would not have been protectable.

In March 2024, the JPO issued guidelines to further clarify how it would interpret the new regulations.  These guidelines, which were published in response to a design patent application for a GUI in virtual reality, specified the following:

• To be protected, a GUI must be used for operating a physical device or must be displayed as a result of performing a function of a physical device.

• A GUI merely displayed in virtual reality, such a cosmetic virtual item, is not a protectable image.

• A GUI displayed in virtual reality may be protectable, so long as it meets all the traditional requirements for image protection (e.g., the GUI must have a functional relationship to the article of the design).

The updated JPO guidelines from the JPO provide a pathway for applicants considering filing applications for projected or virtual reality GUI designs. 

Current Laws in the Republic of Korea (South Korea)

Prior to October 2021, designs that appeared outside of a physical article were not protectable in Korea.  In October 2021, Korea amended its Design Protection Act to allow for the protection of projected and augmented reality designs.  Similar to the current law in Japan, the new amendment allows for image designs not displayed on a screen to be protected, so long as design is used for “operation of a device that exhibits a function.”

The Korean Intellectual Property Office (KIPO), which was elevated to ministry status in October 2025 and renamed the Ministry of Intellectual Property (MOIP), has provided two examples of previously unprotectable projected designs in its Design Examination Guidelines (figures below) that are now protectable under the current Korean Design Protection Act.

Current Laws in the United States

With the March 12, 2026 guidance, the USPTO has now:

(1)  removed the requirement in MPEP § 1504.01(a) that the drawing depict the article of manufacture (e.g., a computer or a portion thereof) in either solid or broken lines for design patent applications drawn to computer-generated interfaces or icons where both the title and claim properly identify an article of manufacture;

(2)  clarified that a design of a computer-generated interface or icon for a computer, computer display, or computer system is more than a mere transient or disembodied picture or three-dimensional image and is patent-eligible subject matter when disclosed and claimed in accordance with the pertinent rules and statutory requirements;

(3)  clarified that claim and title language that indicates that an icon or interface is “for” a computer, computer system, or computer display panel adequately describes a design for an article of manufacture under 35 U.S.C. 171 and that examiners will no longer be instructed to object to such claims and titles under 37 CFR 1.153 or 37 CFR 1.1067;

(4)  highlighted additional types of patent-eligible designs based on the USPTO’s expanded understanding of design patent protection in light of new design formats resulting from the continued modernization of technology (see below); and

(5) provided guidance for examiners and applicants relating to these updates.

These highlighted types of eligible designs include projections and holograms for computers, computer displays, and computer systems where the appearance of the interfaces and icons is separate from the claimed computer, computer display, or computer system that generates it.

Examples that would be newly compliant with the current USPTO guidance are shown below:

As a result of the new USPTO guidance, it is no longer necessary for applicants either to provide a dashed broken line perimeter to illustrate a display screen or to include a display screen in the title and claim.  That being said, applicants must ensure that a suitable article of manufacture is identified in both the title and claim.

The new USPTO guidance also corrects a bothersome legal fiction.  For decades, GUI design inventors have had to sign a declaration—under penalty of perjury—stating that they have invented a new design for a “display screen [or portion thereof] with graphical user interface” (implying on its face that they have invented a new display screen as part of their new GUI design) when, in reality, they have designed a new graphical user interface that may be displayed on a display screen.  In light of the new USPTO guidance, design patent titles and claims can better reflect inventors’ actual inventions to graphical user interfaces, projected interfaces, and virtual reality interfaces themselves.

By Kevin E. Noonan –

The course of the proceedings involving the attempts to remove Judge Pauline Newman from the Federal Circuit is long, and in many senses tragic (see links below).  Just when you might think the last Act has begun (see “Judge Newman Seeks Recourse from Supreme Court“), the Judicial Conduct and Disability Committee (JCDC; “Committee”) had its say. 

The decision (against Judge Newman, unsurprisingly) relates to the Judge’s petition for review of the Judicial Council for the Federal Circuit’s August 29, 2025 Order, extending the suspension that has now lingered for almost three years in the face of the language of the statute that such suspensions should be “temporary” (Judge Newman’s petition itself was filed on October 9, 2025, which may provide temporal context for the Committee’s decision).  The details of Judge Newman’s petition included that the suspension was contrary to the Judicial Conduct and Disability Act (“the Act”) and unconstitutional, and that the Federal Circuit Judicial Council’s denial of her request to transfer the complaint to another Circuit violated her Fifth Amendment right to procedural due process.

The Memorandum of Decision sets forth in detail the history of the Judicial Council’s suspensions and Judge Newman’s arguments and efforts to have them lifted, there being little new ground to survey in this latest recitation.  The Committee does make the effort to disclaim any review of the substance of the allegations against the Judge, including incapacity to accomplish her judicial duties; their remit is to determine the propriety of the consequences ensuing from the Judge’s refusal to submit to a neurophysiological examination by doctors of the Judicial Council’s choosing.  The decision also faults Judge Newman’s petition for not arguing that the Judge had been deprived of “a life, liberty, or property interest protected by the Fifth Amendment,” that was the subject of supplemental briefing that was submitted on November 3, 2025.

The Special Committee’s reasoning is affected by their deferring to the circuit judicial council’s consideration of the special committee’s review of the evidence, citing In re Memorandum of Decision of Judicial Conference Comm. on Judicial Conduct & Disability, 517 F.3d 563, 569 (U.S. Jud. Conf. 2008), in denying Judge Newman relief.  Judge Newman argued in her petition that “(1) the Committee should consider the merits of her as-applied constitutional arguments (in a footnote the Special Committee says they did); (2) the Federal Circuit Judicial Council’s renewal of her

suspension is contrary to the Act and is unconstitutional; and (3) the Federal Circuit Judicial Council’s denial of her request to transfer the complaint violates her Fifth Amendment right to procedural due process.  According to the Special Committee, the persistent renewal of the Judge’s suspension is not contrary to the Act.  Judge Newman’s petition, as in all other filings on the Judge’s behalf, argues that the serial imposition of one-year suspensions is contrary to the limits of the Judicial Council’s power to order, “on a temporary basis for a time certain, no further cases be assigned to the judge whose conduct is the subject of a complaint” (emphasis added), citing Section 354(a)(2)(A)(i) of the Act (also citing Rule 20(b)(1)(D)(ii) that the judicial council may order “that no new cases be assigned to the subject judge for a limited, fixed period”).  As Judge Newman has contended elsewhere, the petition argues that the Judicial Council, in the exercise of its power, has violated the “for a time certain” limitation and that in the practice of imposing suspensions under the Act, one year was the longest imposed hitherto.  Also included in this argument is that the suspension is “unprecedented” and has effectively been made permanent by circumvention of the “time certain” requirement under the Act.

The Special Committee disagrees that this is a unique situation, having found that while “[m]any suspensions have been for a one-year duration” that does not act to define the length of a “temporary” suspension, and there is one case (discussed in a footnote; In re: Complaint of Judicial Misconduct against United States District Judge G. Thomas Porteous, Jr. under the Judicial Conduct and Disability Act of 1980, No. 07-05-351-0085 (5th Cir. Jud. Council Dec. 20, 2007)) where the suspension was longer.  The decision notes that the Act provides no explicit definition of “temporary” but that a plain meaning definition would be “suspension for a limited time with a certain end date.”  The Special Committee states that having each term limited to one year, with review at the end of each term ensures that “the suspension is reviewed regularly to determine whether it is still appropriate under the circumstances.”  And the “lengthy consideration” given Judge Newman’s motion for reconsideration “demonstrates that the Judicial Council’s decision to renew the suspension is not simply a rubberstamp.”  The decision self-justifies on the basis that permitting Judge Newman to hear cases before the question of her competence is resolved “could have serious effects on litigants and prejudice the effective and expeditious administration of the business of the courts” (which is certainly the case for those litigants, such as the litigant in Rudisill v. McDonough, 601 U.S. 294 (2024), who saw Judge Newman’s dissent be persuasive before the Supreme Court).  The decision contains a long passage from the Special Committee’s July 28, 2025 Report, which speaks for itself:

Judge Newman’s conduct in refusing to undergo the medical examinations ordered by the Committee is a serious matter.  Her conduct prevents the Committee from completing the process established by Congress for determining whether a life-tenured judge suffers from a disability.  Litigants before this Court deserve to have confidence that the judges ruling on their matters do not suffer from a cognitive impairment that may affect the resolution of their cases.  They also deserve to have confidence that the mechanisms Congress established for addressing judicial disability function properly and that a judge with such an impairment cannot derail the process by refusing to cooperate.  The Committee and the Judicial Council have an overriding duty to ensure that the judges on this Court are able-minded and capable of performing their jobs.  We also have a responsibility to court employees to ensure that they have a workplace free from hostile and abusive behavior.  When serious concerns are raised about a judge’s fitness, they must be taken seriously and addressed expeditiously, and all judges must recognize their duty to facilitate that process.

The decision further justifies the extension of the suspension on the grounds that the Judicial Council “extensively considered additional expert reports and evidence that could have resolved the proceeding,” setting forth the possible outcomes in Judge Newman’s favor that are ephemeral under the actual circumstances.  The decision characterizes the Special Committee’s review as being “careful” and demonstrating that “the facts of the JC&D proceeding had meaningfully evolved” so that there was a possibility for resolution.  Under these possibilities, the Special Committee finds that the renewed suspension remains “temporary.”  The Special Committee interprets the Act as “envision[ing] that any suspension must be based on its own facts and circumstances to qualify as temporary under § 354(a)(2)(A)(i)” and that “[a] judicial council must approach each application of that power based on new facts and circumstances that emerge during its consideration of the remedy for ongoing complaints that are not yet resolved.”  The decision also posits that in a world where they had had an opportunity to review the circumstances of the first renewal, the outcome here might have been different.  But they did not, and here do not, provide a different outcome.

The decision next turns to Judge Newman’s assertion that these serial suspensions “usurp Congress’s exclusive control over impeachment and removal” and, accordingly, the Judicial Council is required to refer her to the House of Representatives for impeachment if “her misconduct is so serious it requires an unprecedented three-year suspension.”  The Special Committee declines to consider the bases for Judge Newman’s suspension to amount to “Treason, Bribery, or other high Crimes and Misdemeanors” under U.S. Const. art. II § 4 that would qualify the Judge for impeachment (and reasons that no judicial council has ever done so as the result of a disability complaint).  The decision further notes that Congress does not need a “certificate of impeachment” from a judicial council to impeach, and is not compelled to impeach should it receive one.  According to this logic, Judge Newman’s continued suspension does not usurp Congress’s right to impeach (which seems to create a procedural limbo for the Judge, or misses her point).

The Special Committee’s rationale on the constitutionality of renewable suspensions is that “the ‘judicial power’ referenced in Article III belongs to the judiciary, not individual judges,” citing N. Pipeline Constr. Co. v. Marathon Pipe Line Co., 458 US 50, 59–60 (1982), and finds no authority for the (reasonable) proposition that judicial power is exercised (and to some extent only exists) by individual judges (or at least a panel of them).  This conclusion is supported by citations that don’t seem to be quite on point.  The decision also makes distinctions between being removed from office and being prohibited from hearing cases, but to the extent the distinction involves a judge “continu[ing] to receive salary and would continue to hold office” it is unclear how such a judge could be “eligible to exercise judicial authority” as the decision contends.  And the further distinction that the Chief Judge did not reassign any of Judge Newman’s cases at the time of her first suspension (having been prohibited from taking any other cases for six months before) seems unavailing for the Special Committee’s argument.  This portion of the decision returns again to the calculus that because Judge Newman refused to comply with the Judicial Council’s demands to neurophysiological examination which was required in order for them to make a “fully informed determination as to whether Judge Newman is suffering from a disability that prevents her from discharging the duties of office,” the “temporary” suspension(s) under 28 U.S.C. § 354(a)(2)(A)(i) “[did] not amount to removal from office” (if only because the Judge kept her salary and title).

Finally, the Special Committee’s decision holds that refusal of Judge Newman’s request to transfer her case to the Judicial Council of another Circuit Court did not violate the Judge’s Fifth Amendment right to due process.  The basis for this decision is that Judge Newman has no protected property interest from which she was deprived.  One reason for this outcome is that the property interest Judge Newman asserted was the exercise in “judicial power,” which the Special Committee decided was not a personal interest but “belongs to the courts, not individual judges” under N. Pipeline Constr. Co.  The decision also uses the distinction that Judge Newman was permitted to continue working on the cases she had heard before the Chief Judge prohibited her from sitting on any additional cases three years ago.  Thus, according to the decision, Canon 3(A)(2) (“a judge ‘should hear and decide matters assigned, unless disqualified’”) did not support her claim to a property right to her judgeship.  And the decision enumerates a list of the perquisites of her position (including an office, a law clerk salary, and benefits) and concludes that “Judge Newman cannot have been deprived of a property interest in an office she still holds,” citing Abcarian v. McDonald, 617 F.3d 931, 941-42 (7th Cir. 2010).

The Special Committee is willing to acknowledge that Judge Newman has alleged a protected liberty interest in her “personal medical records and in avoiding compelled neuropsychological examinations” but that is not enough to convince the Committee that the Judge has been deprived procedural due process.  The Special Committee recognizes Judge Newman’s argument that “due process requires the disqualification of a decision maker when the circumstances present a risk of actual bias or create the appearance of bias so substantial that it would tempt the average adjudicator” but rejects application to this case of the legal citations the Judge relied upon in making her claims.  The basis for the decision is that the actions of the Judicial Council are administrative rather than judicial, and that “[t]he Supreme Court has rejected the argument that the combination of investigative and adjudicative functions creates an unconstitutional risk of bias in an administrative proceeding,” citing Withrow v. Larkin, 421 U.S. 35, 47 (1975):

The contention that the combination of investigative and adjudicative functions necessarily creates an unconstitutional risk of bias in administrative adjudication has a much more difficult burden of persuasion to carry.  It must overcome a presumption of honesty and integrity in those serving as adjudicators; and it must convince that, under a realistic appraisal of psychological tendencies and human weakness, conferring investigative and adjudicative powers on the same individuals poses such a risk of actual bias or prejudgment that the practice must be forbidden if the guarantee of due process is to be adequately implemented [emphasis in brief].

Specifically, the Special Committee rejects Judge Newman’s allegations, inter alia, that the Judicial Council’s rejection of the reports of her experts was evidence of bias, because the basis for this conclusion was that her evidence was insufficient.  And the Special Committee in setting forth the circumstances suggests that the request for transfer was premature:

When the Committee considered Judge Newman’s petition for review of her initial suspension, it noted that if the Judicial Council were to reach the ultimate issue of whether Judge Newman suffers from a disability, she might seek testimony from her colleagues on the Judicial Council if a Rule 14 hearing were held.  We explained that under those circumstances, the Chief Circuit Judge and Judicial Council should give due consideration as to whether a request for transfer would be warranted.  . . .  If at a later stage in the proceedings, members of the Judicial Council will be called upon to provide testimony on the ultimate issue – whether Judge Newman suffers from a disability – then due process concerns would counsel in favor of a request to transfer the complaint.

Whereas here the narrow question before the Judicial Council did not implicate these situations that might support transfer.

Finally, the Special Committee’s decision contains a possibility of a favorable decision to transfer, saying that “throughout the proceedings, Judge Newman has consistently represented that she would agree to cooperate with the investigation and undergo a medical examination if the complaint were transferred to a different circuit.  In that event, the Committee expects Judge Newman to honor her representation to undergo further medical evaluation.”  Not an explicit quid pro quo, perhaps, but more than a suggestion that there may be a path forward (other than retirement) should the Supreme Court deny the Judge’s certiorari petition.

For additional information regarding this topic, please see:

• “Judge Newman Seeks Recourse from Supreme Court,” March 15. 2026
• “Judge Newman’s Petition for Rehearing En Banc Denied,” December 30, 2025
• “Judge Newman’s Challenge Fails at D.C. Circuit,” August 22, 2025
• “Federal Circuit Special Committee Recommends Continued Suspension for Judge Newman,” July 28, 2025
• “Newman v. Moore – Down to a “Battle of the Experts”?” March 25, 2025
• “Judge Newman Files Appeal with D.C. Circuit,” December 22, 2024
• “An American (and Entirely Unnecessary) Tragedy,” December 9, 2024
• “Judge Newman Suspension Renewed,” July 25, 2024
• “Judge Newman’s Suit Comes to an End,” July 9, 2024
• “Judge Newman Suspended for One Year by Federal Circuit,” September 20, 2023
• “Federal Circuit Special Committee Recommends One-Year Suspension of Judge Newman,” August 6, 2023
• “Judge Newman and the On-Going Attempts to Remove Her from the Federal Circuit,” May 21, 2023

Despite a pointed decision by the Federal Circuit vacating and remanding the matter to the Patent Trial and Appeal Board, yesterday the Board once again granted priority for CRISPR technology to the Broad Institute. A more detailed discussion of the basis for this judgment will follow.

By Kevin E. Noonan –

The Parties – Senior Party Broad Institute, Harvard University, and MIT (collectively, “Broad”) and Junior Party Regents of the University of California, Berkeley; University of Vienna; and Emmanuelle Charpentier (collectively “CVC”) – each timely filed a paper on conception dates upon which they intend to rely in the Patent Trial and Appeal Board (PTAB) reconsideration on priority under remand from the Federal Circuit, who last year vacated and remanded the Board’s decision awarding priority in Interference No. 106,115 to Senior Party Broad.

CVC’s submission relied on the four dates contained in its earlier-filed Substantive Motion No. 2: “This motion first shows that the inventors had a complete conception by March 1, 2012 . . . .  The motion provides additional evidence of conception, alternatively, by April 11, May 28, or June 28, 2012” (emphasis added in CVC’s Paper).  Also mentioned in this Paper is that Broad acknowledged CVC’s assertion of these conception dates in its earlier-filed motions, which CVC also asserted in its Reply Brief for Substantive Motion No. 2, which addressed the putative absence asserted by Broad (in its Opposition to CVC Substantive Motion No. 2) of certain components (a U6 promoter) in CVC’s Reply Brief, which asserted that CVC was using this promoter by at least May 28, 2012.

The Broad in its Paper argued first for complete conception before CVC’s earliest conception date (March 1, 2012), specifically directed to Inventor Zhang’s “vector design” on August 7, 2011 and system disclosed in a January 12, 2012 NIH grant proposal.  Broad also asserts independent conception of an embodiment on June 26, 2012 comprising a GAAA linker (characteristic of sgRNA).

These assertions will be argued in the Parties’ Opening Briefs filed on October 10, 2025 (limited to 25 pages); response/opposition to their opponents briefs filed on November 7, 2025 (limited to 25 pages); and a Reply by each party filed on December 5, 2025 (limited to 10 pages).  It should be recognized with regard to Broad’s submission that the conception dates prior to CVC’s March 1, 2012 date are directed to so-called “dual guide” RNA species (wherein the CRISPR (crRNA) and tracer (tracrRNA) are present in the CRISPR complex with the Cas9 endonuclease as separate species), and CVC’s conception comprises so-called “single guide” RNA (sgRNA), illustrated by a laboratory notebook page submitted by CVC in this interference as evidence of conception:

The Count (that defines the interfering subject matter in the ‘115 Interference as declared) reads as follows:

Count 1: Claim 18 of Broad U.S. Patent No. 8,697,359

An engineered, programmable, non-naturally occurring Type II CRISPR-Cas system comprising a Cas9 protein and at least one guide RNA that targets and hybridizes to a target sequence of a DNA molecule in a eukaryotic cell, wherein the DNA molecule encodes and the eukaryotic cell expresses at least one gene product and the Cas9 protein cleaves the DNA molecules, whereby expression of the at least one gene product is altered; and, wherein the Cas9 protein and the guide RNA do not naturally occur together, wherein the guide RNAs comprise a guide sequence fused to a tracr sequence.

Thus, to establish priority each Party will need to show conception of this CRISPR using this sgRNA species.

Moreover, Broad’s assertion of conception of the sgRNA (which comprises the GAAA linker) is apparently contrary to (or perhaps inconsistent with) evidence of record in the interference regarding communication of CVC’s conception of sgRNA by Dr. Marrafini who attended a public scientific talk by Dr. Doudna after CVC’s earliest provisional applications disclosing CRISPR using these species had been filed (albeit dates not recognized as giving CVC priority in Substantive Motions CVC filed in an effort to be declared the Senior Party).

These issues will no doubt be argued extensively in the Parties’ briefs-on-remand discussed in forthcoming posts.

By Michael Borella –

Among the many failings of the current U.S. patent eligibility framework under 35 U.S.C. § 101, perhaps none is more corrosive to the patent system’s basic function than the fact that the framework keeps changing.  The judicial exceptions to patentability are, in theory, stable background principles.  These exceptions limit the breadth and viability of inventions that encompass laws of nature, natural phenomena, and abstract ideas.

In practice, the Federal Circuit’s application of those principles to software patents over the twelve years since Alice v. CLS Bank has resembled less a coherent legal standard and more a series of freely-improvised opinions.  Some of these opinions were briefly influential before being quietly diminished, and others have calcified into doctrine despite being logically indefensible.  The result is a body of law that requires patentees and practitioners to track the current state of the doctrine on a monthly – if not weekly – basis.

In the immediate aftermath of Alice,the Federal Circuit went on something close to an invalidation streak.  Ultramercial, LLC v. Hulu, buySAFE, Inc. v. Google, and Planet Bingo, LLC v. VKGS LLC all came down within months of the Supreme Court’s June 2014 decision, each finding ineligibility of the respective claims at dispute.  Some in the patent community concluded, not unreasonably, that software patents as a class were effectively finished.

The first exception to this narrative was DDR Holdings, LLC v. Hotels.com, decided in December of that year, in which the Federal Circuit managed to find eligibility by characterizing claims as “necessarily rooted in computer technology” and directed at solving a problem “specifically arising in the realm of computer networks.”  For a time, DDR was considered a lifeline, as it stood for the principle that an invention could survive under § 101 if it addressed a problem that was native to the internet itself, rather than merely implementing a pre-existing human practice online.

The wave built in 2016.  Enfish, LLC v. Microsoft Corp. held that claims directed to improvements in computer functionality itself (and not just the use of a computer to accomplish some other task) might survive at step one of the Alice framework.  The self-referential database at issue in Enfish was patent eligible because the claims focused on the computer’s own performance rather than on a result to be achieved using a computer.

Shortly thereafter, McRO, Inc. v. Bandai Namco Games America found non-abstract a method for automating lip-sync animation using a specific, defined set of rules, on the theory that the claims were directed to a concrete improvement in a technical process rather than to the general concept of animation.  BASCOM Global Internet Services v. AT&T Mobility added an Alice step-two variant; notably, even if a claim is directed to an abstract idea at step one, an unconventional arrangement of known components can supply the inventive concept needed to survive step two.

For a period of roughly two years, from mid-2016 through 2017, these three cases represented what felt like a durable framework for software patent eligibility.  Improve the computer, use specific unconventional rules, or arrange known components in a non-routine way, and you had a fighting chance.

The problem was that these principles were never given stable content.  Improving computer functionality turned out to mean whatever a particular panel thought it meant on a given day.  Claims that looked very similar to the Enfish database (e.g., specific, technically detailed, directed at improving computer performance or functionality) were found ineligible by other panels on the grounds that the claimed improvement was to the result achieved by using the computer, not to the computer’s own operation.[1]  McRO‘s specific rules proved similarly slippery.  It was unclear how specific the rules needed to be, and how one was supposed to distinguish a specific technical rule from a specific abstract idea.  By 2018 and 2019, the DDR / Enfish / McRO / BASCOM quartet was still nominally alive, but in practice courts were citing these cases mainly to distinguish over them on the way to finding claims ineligible.

The next significant development was procedural rather than substantive.  In Berkheimer v. HP Inc. (Fed. Cir. 2018), and Aatrix Software v. Green Shades Software, the Federal Circuit held that whether claim elements are “well-understood, routine, and conventional” under step two involves underlying questions of fact that cannot always be resolved on a motion to dismiss or summary judgment without an evidentiary record.  This was genuinely significant, at least on paper.  It meant that a defendant could no longer simply assert in a brief that every element of a software claim was generic, without any supporting evidence, and walk out with an early dismissal.

What happened next was predictable in retrospect.  Courts narrowed the reach of Berkheimer and Aatrix in practice by holding that only specific, well-pleaded factual allegations could defeat a § 101 invalidity motion at the pleading stage.  In other words, the burden to establish an evidentiary record was transferred from the challenger to patentee.  By the early 2020s, these decisions had lost much of their practical force.  Courts routinely found that the factual questions supposedly raised by Berkheimer were not genuinely disputed, or that a complaint’s allegations of unconventionality were too conclusory to count.

Through the early 2020s, the Federal Circuit continued generating § 101 decisions at a volume and inconsistency that made the law difficult to summarize in any concise way.  Different panels reached different conclusions on claims that practitioners regarded as substantively similar.  The “improvement to computer functionality” rationale from Enfish was applied in some cases and given lip service in others with no discernible pattern.  The “internet-centric problem” reasoning from DDR shrank in practical scope, with courts increasingly skeptical that framing a problem as internet-specific was enough to confer eligibility.  The BASCOM “unconventional arrangement” principle was rarely the deciding factor in eligibility determinations.

The most recent chapter involves artificial intelligence, and it is not encouraging.  Recentive Analytics, Inc. v. Fox Corp. held that claims applying established machine learning (ML) methods to new data environments without any improvement to the underlying ML model are ineligible.  This was billed as a case of first impression, and in one narrow sense it was.  The Federal Circuit had not previously addressed ML claims in precisely these terms.  But the holding simply applied the existing Alice framework’s skepticism about computer implementation to the ML context.  The new wrinkle, and the dangerous one, is the implication that ML-based claims must demonstrate innovation within the model architecture itself, not merely in the application of the model to a new domain.  This effectively sets a floor of technical specificity for AI patents that the prior case law had not explicitly required for other categories of software.[2]

What is not debatable is the trajectory of the last twelve years taken as a whole.  In 2014, the rule was (more or less) that software is presumptively suspect, with no clear path to eligibility yet established.  By 2016, the rule was that software can be eligible if it improves computer functionality, uses specific unconventional rules, or arranges known components in a new way.  By 2018, the rule added a procedural gloss in that eligibility questions may involve facts that need to be developed.  By the early 2020s, the rule had effectively contracted again, with the pro-eligibility rationales of 2016 being cited mainly as foils.  By 2025, the rule for AI appears to be that the model itself must be novel, not just its use.

Each of these iterations was announced as an application of the same two-step Alice framework.  None of them was formally repudiated when the next one arrived.  They coexist in the case law as nominally live authority, cited by courts and practitioners depending on which way the argument runs.

This is not how legal doctrine is supposed to work.  A test is supposed to produce consistent outcomes when applied to similar facts.  The § 101 test as applied to software produces outcomes that are consistent mainly in their inconsistency.  An inventor filing a patent application drawn to machine learning today cannot know whether their claims will be evaluated under the Enfish improvement-to-computer-functionality rationale, under the Recentive ML-specific rule, or some weighted combination of these and other factors.  What they can know is that the goalposts will likely have moved at least once more before any patent that grants from the application can be asserted.

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[1] This distinction between improving what the computer does and improving the result the computer produces proved to be one of the more philosophically complex and practically useless dividing lines in the post-Alice doctrine.  From an engineering standpoint, an improvement can be found in both a more efficient process to produce a result as well as a process that produces a better result.  Why one is more likely to be eligible than the other remains mysterious but likely has little to do with real-world concerns.

[2] This is another distinction that makes no sense.  One of the technical challenges in the ML space is determining which ML model to apply to what data.  The differences between model output given the same data can be extreme.  Requiring ML inventors to innovate at the model layer rather than the use case layer is the equivalent of telling the inventors of the spreadsheet that their software was patentable only if they disclosed a new transistor.

By Kevin E. Noonan –

Neither the Parties nor the Patent Trial and Appeal Board (PTAB) have been resting in addressing the decision by the Federal Circuit that vacated and remanded the Board’s decision awarding priority in Interference No. 106,115 to Senior Party The Broad Institute, Harvard University, and MIT (collectively, “Broad”; Junior Party is the Regents of the University of California, Berkeley; the University of Vienna; and Emmanuelle Charpentier, collectively designated “CVC”; while this reminder may not be necessary it has been a while).  On August 15, 2025, the Parties and the Board participated in a conference call to determine the procedural bases for going forward.

First order of business was a change in the composition of the PTAB panel hearing the interference.  According to Paper 2900, Administrative Patent Judges (APJs) Sally Gardner Lane and James T. Moore were replaced by APJs Rachel H. Townsend and David Cotta, joined by APJ Deborah Katz.

The Board then handed down an Order (Paper 2901; see below) regarding the further progress of the interference, which determined the order in which the Parties’ briefs are discussed.  Both parties were given the opportunity to submit briefing supplementing their priority statements and arguments, to be submitted on the same day (October 10, 2025; limited to 25 pages).  These briefs are then to be followed by a response/opposition to their opponents briefs (November 7, 2025; limited to 25 pages), followed by a Reply by each party (December 5, 2025; limited to 10 pages).  Each Party was permitted to include argument regarding the issue of derivation, which the Board determined had been included in the remand order, specifically:

“On remand, the later party to reduce to practice will have the opportunity to show, under a conception date established by the correct standard . . . (2) it had ‘prior conception of the claimed subject matter and communication of the conception to the adverse claimant.’”  (Regents, 136 F.4th at 1382 (quoting Price v. Symsek, 988 F.2d 1187, 1190 (Fed. Cir. 1993) (awarding priority where there was “prior conception of the claimed subject matter and communication of the conception to the adverse claimant.”)).

The Parties are precluded from submitting new evidence without Board authorization.

In an Appendix to the Order is reproduced a jointly-filed e-mail to the Board regarding the Parties proposals.

The Parties each satisfied the deadlines imposed by the Board, and further posts will set forth each Parties arguments, Oppositions to their opponent’s arguments, and Replies.  Also discussed in a future post will be the Parties’ renewed Priority Statements.

To date there has been no Order from the Board setting the date and time for Oral Hearing.

Update: Administrative Patent Judge Rae Lynn P. Guest replaces Administrative Patent Judge Rachel H. Townsend on the panel (Paper No. 2913; see below).

Hat tip to Mary Till of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP for bringing the panel change to our attention.