NEWS
USPTO Launches AI “Pre-Examination Search” Pilot: What It Means for You
AI Pre-Examination Search Test Program
The USPTO just kicked off a new pilot program: the Automated Pre-Examination Search, or ASRN*. The idea is simple—before a human examiner ever looks at your application, an AI combs through U.S. and foreign patent databases and gives you up to ten relevant prior art references. Right now, it’s limited to 1,600 original utility applications over six months, but if it works, expect this to become part of standard practice.
Costs Are Steep, but There Are Benefits
To get in on it, you file electronically, pay a $450 petition fee, and meet eligibility rules. Yes, the fee is steep for a simple list of references, but the PTO has thrown in a few sweeteners to make it worthwhile:
- Quick abandonment: Hit by dead-center prior art? Abandon and get your search fee—and any excess claim fees—back.
- Preliminary amendments: Tweak claims before examiner review, potentially moving things along faster.
- Examiner reliance: If examiners actually use the ASRN (and the PTO hints they will), it could shortcut a lot of duplicate searching.
- International filing prep: You get prior art intelligence before the 12-month Paris Convention deadline, making foreign filing decisions smarter.
A note on IDS*: the ASRN is part of your prosecution history, but not technically an IDS. Practically speaking, you’ll probably want to submit it anyway.
Test Program May Become the Norm in the future
Here’s the bottom line: this program’s value depends on two things—how good the AI search is, and whether examiners actually rely on it. If both go well, you get early insights, faster prosecution, and fewer wasted office actions. If not, that $450 fee might sting a little. Either way, this is the PTO dipping its toes into AI-driven examination, and a successful pilot could lead to bigger changes down the road.
*ASRN- Automated Search Results Notice. The USPTO provides an example of one here.
*IDS- Information Disclosure Statement: a submission of relevant background art or information.
For Bob’s humorous take on AI usage by both inventors and the PTO, check out our Patent Beast comic series on AI.
Related to the USPTO and AI: USPTO AI Subject Matter Eligibility Guidance
USPTO Proposes Major IPR Changes: What Patent Owners Should Know
The USPTO proposes IPR Restrictions that Could Strengthen Patent Protection
The USPTO is considering rules that could fundamentally change how inter partes review (IPR) works. If finalized, these changes would make it harder for third parties to challenge patents at the PTAB. This could be a big win for patent owners—but it also raises strategic questions for anyone considering an IPR. Here’s what patentees need to know:
1. Previous Validity Findings Could Shield Your Patent from IPR Challenges
The USPTO would bar IPRs if the challenged claims—or their dependent claims—have already been found valid in prior proceedings. This includes district courts, ITC, or PTAB trials. Even dependent claims could be protected if the corresponding independent claim survived. For patent owners, this means patents that have held up under scrutiny may now enjoy stronger protection against repeated attacks.
2. Parallel Litigation May Limit the Ability to File IPRs
If a patent is already involved in ongoing litigation, and the court is likely to reach a validity decision before the PTAB concludes, the USPTO could deny an IPR.
This formalizes what has been called the Fintiv framework. Patent owners benefit because this reduces the risk of simultaneous challenges in court and at the PTAB. The result: more predictable enforcement and litigation outcomes.
3. Petitioners Must Commit to Binding Stipulations
Under the proposed rules, petitioners would have to commit not to raise anticipation or obviousness arguments anywhere else. This goes beyond current estoppel rules and further limits duplicative challenges, effectively giving patent owners more control over the PTAB forum.
Exceptions to IPR Denial Are Limited and Narrow
The rules allow IPRs in very limited cases, such as bad-faith prior challenges or major changes in law. Routine new evidence or legal arguments will generally not reopen a previously defended patent.
What These IPR Changes Mean for Patent Owners
- Patents that have survived prior scrutiny may now be more secure from repeated PTAB challenges.
- Ongoing litigation may reduce the likelihood of parallel PTAB proceedings, simplifying enforcement strategy.
- Stronger IPR protections can make patents more valuable for licensing or enforcement, as serial attacks are curtailed.
- Strategic awareness remains critical: understanding prior proceedings, current litigation, and the timing of potential IPRs is essential.
The USPTO is taking comments on these proposed rules for a short 30-day period, and patent owners should monitor these developments closely, particularly if their patents are frequently challenged.
You can learn more about IPR’s, and opposing patents in general, from our FAQ section: Patent FAQs- Opposing Patents
And a YouTube FishFAQ’s video on Opposing Patents is available as well.
Related articles in the USPTO’s IPR development: USPTO Slams the AAPA Window Shut — Shockwave’s Over Before It Started
The Fintiv Pendulum Swings Back — What Patent Litigators Need to Know
Patentees in Indonesia: Don’t Forget Your 31 December 2025 Statement of Working
If you hold a patent in Indonesia, this is your annual wake-up call: the Statement of Working (SOW) is due 31 December 2025. This isn’t optional. Under Article 20A of Indonesia’s 2024 Patent Law, patent holders must report whether they are actually using their patents in Indonesia.
Why does this matter? Failing to submit the SOW isn’t just a clerical slip — it’s breaking the law. Since 2016, Indonesia has warned that patents not used locally risk a compulsory license or even partial or full invalidation. The 2024 law reinforces this risk.
So what should you do? Prepare and submit your Statement of Working before 31 December 2025. This isn’t a one-time task — it’s required every year. Filing on time keeps you compliant and protects your patent rights in Indonesia.
The takeaway: if your patent isn’t actively used or you haven’t filed your SOW, act now. The law doesn’t wait — and neither should you.
For foreign patent holders, we have a FAQ set up on the Statement of Work; where and when it is required. It can be found at the bottom of the page here: https://fishiplaw.com/faqs/patent-faqs/faq-foreign-filing/
Why IPR Decisions Don’t Preclude District Court Litigation
An Illustration from Life of Issue Preclusion
The kids are fighting over something and bring it to me to resolve. I don’t really want to get involved in whatever they’re arguing about. Instead of just telling them to knock it off, I agree to hear them out on one condition: if they’re going to drag me into this, they have to accept my decision and move on.
Each kid is convinced he’s absolutely right, so they agree. After listening to both number 1 and number 2’s arguments, I decide number 2 was wrong. I tell him that number 1 is right and that he needs to apologize. They both leave, number 1 looking smug and number 2 pouting.
Five minutes later, number 2 comes back. He starts making the same arguments again, insisting I must not have understood the first time. I stop him right there and remind him that this issue has already been decided. He agreed to accept the judgment.
This is the basic legal principle of “issue preclusion”. Once a court has finally decided a specific issue of fact or law, the parties can’t re-litigate that same issue in a later case. This is true even if later case involves different claims.
Why Patent Cases Often Have Two Battles: PTAB vs. District Court
Issue preclusion comes up frequently in patent cases. These cases often involve two sequential proceedings: an Inter Partes Review (IPR) at the Patent Trial and Appeal Board, followed by district court litigation.
An IPR may cancel some claims. After that, the patentee often amends the lawsuit to assert similar—but not identical—claims in court. The accused infringer naturally argues that the PTAB has already decided the relevant issues. They claim the patentee should not get another bite at the apple.
The Federal Circuit’s Take: Different Standards, Different Outcomes
The Federal Circuit has generally rejected that argument. Invalidity in an IPR is decided under the lower preponderance of the evidence standard. Invalidity in district court must be proven by clear and convincing evidence. Because of this difference, the two proceedings do not resolve the “same issue” for purposes of issue preclusion. In short, what counts as “already decided” in an IPR often isn’t “already decided” in court.
Number 2 would certainly approve.
Some articles related to patent litigation: Discovery Gamesmanship Backfires: A Lesson in Playing Fast and Loose
The Impact of Third-Party Litigation Funding on Patent Disputes
Summary of Causam Enterprises, Inc. v. International Trade Commission (Fed. Cir. Oct. 15, 2025)
Continuation-in-Part Applications Not Covered in Assignments
The Federal Circuit held that a 2007 patent assignment did not cover continuation-in-part (CIP) applications.
The assignment referenced “divisions, reissues, continuations, and extensions,” but did not mention CIPs.
Relying on standard contract principles, the court refused to insert terms the parties did not include.
The Distinction Between Continuation and Continuation-in-Part Applications
The panel emphasized that continuations and CIPs are distinct under long-settled patent law. Continuations cannot add new matter, while CIPs can. That difference carries real legal and practical consequences for ownership and recordation.
The Singular Exception in UNM v Knight
The court contrasted its decision with University of New Mexico v. Knight (2003). In Knight, similar language was held to include CIPs. The panel distinguished that case because additional agreements transferred “all related patents.”
Potential Gamesmanship of the Decision
Some commentators described the analysis as clear but overly formalistic. They argued it ignored functional concerns, including potential gamesmanship. A drafter could add minimal new material, file a CIP, and shift ownership.
In the end, the ownership dispute did not matter. A companion IPR proceeding had already invalidated the relevant patent claim for obviousness.
For additional information on Continuation and Continuation-in-Part patent applications, see our FAQ section on Patent Prosecution, with the questions addressed towards the bottom of the page.
Automated Telephone Line Open
We just opened up a new service: a telephone line: (949) 943-8311 . You can call and get answers to basic Intellectual Property questions. We have text FAQs available on our website. We also have a text chatbot available too that uses a personalized Chat GPT. The Chatbot accesses information from the FAQs and Bob’s books: White Space Patenting, and Green Fields Patenting.
But if you want to ask the questions with voice rather than text them, this might be the option for you.
The new Voice line can be accessed at (949) 943-8311.
Discovery Gamesmanship Backfires: A Lesson in Playing Fast and Loose
The ol’ “Switcheroo”: One Argument in Discovery, the Opposite in Trial
Every so often, the Federal Circuit hands down a decision that’s less about patents and more about human nature. Magēmā (pronounced: Maggie-May) Technology v. Phillips 66 is one of those cases.
In the initial trial, Phillips convinced the magistrate during discovery that Magēmā didn’t need actual test data. It would be “too dangerous” to obtain the test data, so formulas would be good enough. Then, once trial rolled around, Phillips told the jury the exact opposite: no test data, no infringement.
Magēmā objected but the district court overruled, and the jury came back with a broad-brush “no infringement.”
The Appellate Judge Notices the Discrepancy
But on appeal, the Federal Circuit said, hold on a second. When a party spends the whole trial hammering on a theory it promised wasn’t necessary in discovery, you don’t get to call that “harmless error.” Judge Bumb, sitting by designation, had the perfect metaphor: this wasn’t pepper sprinkled here and there — the whole trial was marinated in it.
Phillips 66 is Forced to Play by Its Initial Argument
So, new trial. Phillips’ gamesmanship, instead of locking in a win, ended up boomeranging right back at them.
Magēmā also tried to raise a claim construction issue under O2 Micro, but that one fizzled. You can’t complain about claim scope being left to the jury if you never asked the court to construe the terms in the first place.
Because I hate litigation gamesmanship, I am very happy to see this outcome. Unfortunately it is allowed way too often. But at least this time, the party playing the games didn’t profit.
Some related articles on court shenanigans: Generic Drug Label Doesn’t Induce Patent Infringement Just by Listing Optional Refrigeration