USPTO Director Signals Continued Pro-Patent Discretionary Denial Policy at the Patent Trial and Appeal Board
In a precedential decision in Magnolia Medical Technologies, Inc. v. Kurin, Inc., USPTO Director Squires denied IPR institution and reinforced the policy framework for discretionary denial at the PTAB, signaling a policy of using discretionary denial to allow the PTAB to serve as an alternative to, not an expansion of, district court patent litigation.
Joshua Martineau and Jarom Kesler Explore New USPTO Procedure for Ex Parte Reexamination in Law360
Joshua M. Martineau & Jarom D. Kesler
In a recent article published in Law360, Knobbe Martens lawyers Joshua Martineau and Jarom Kesler explore the U.S. Patent and Trademark Office (USPTO)’s latest guidance regarding ex parte reexamination (EPR) proceedings. On April 1, the USPTO announced a significant change to the EPR process, allowing patent owners to submit preorder papers to inform the office’s decision of whether to order EPR. This development, Martineau and Kesler maintain, “could be a boon for patent owners in EPRs, who previously had slim chances of avoiding reexamination.” (Historically, nearly 93% of all EPR requests have been granted.)
USPTO Launches PIER Pilot Program Creating New Pre-Examination Decision Point for PCT National Stage Applications
The USPTO’s new PIER Pilot Program requires applicants in selected PCT national stage applications to affirmatively decide whether to proceed with, delay, or abandon U.S. patent examination. Participation is mandatory for selected applications, and failure to respond to the USPTO’s Requirement for Information will result in abandonment. Patent owners and applicants with active or pending 35 U.S.C. § 371 filings should prepare internal workflows now to evaluate and respond to selection quickly.
SMEDs Are Working: What the USPTO’s Updated § 101 Patent Eligibility Guidance Means for Innovators
Philip M. Nelson & Jarom D. Kesler
The U.S. Patent and Trademark Office’s April 30, 2026 memorandum encourages patent applicants to submit separate declarations supporting “subject matter eligibility” (SMEDs) in response to § 101 rejections. The USPTO first encouraged this approach in December 2025, and confirms in this latest guidance that such declarations have been helpful in facilitating patent allowance. SMED declarations should explain how the claimed invention is “better, cheaper, faster, and/or more efficient” and provides “real-world technological application, effect and benefit.”
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