While it may seem like the only constant at the United States Patent and Trademark Office (USPTO) is change, that sentiment rings especially true in 2025. With a new presidential administration in the White House and numerous personnel and policy changes throughout the federal government, patent practitioners may be experiencing whiplash. Here, we break down some of the most important recent developments in intellectual property law, policy, and procedure and offer advice to practitioners on how to respond.
Political developments
The new administration has implemented a number of changes that affect the USPTO, reasoning that the changes will reduce government size and spending. A few of those changes include:
- Return to office mandate: The administration wants most remote (work at home) federal employees to return to working in the office. At the USPTO, most examiners work remotely, and many work far from Washington, D.C., and there are too few offices for all examiners to return. Some examiners have been asked to work in courthouses and other government buildings.
- Federal worker early retirement/buyout incentives: The administration has offered “deferred resignation” incentives to federal employees, including USPTO personnel. Several high profile USPTO managers have accepted these deferred resignation incentives. It is not clear how many USPTO employees have accepted these offers, and the legality of these incentives and any future layoffs are likely to be challenged.
- PTAB judge layoffs: The administration has encouraged existing PTAB judges to voluntarily leave/retire prior to layoffs (“reduction in force”) which are planned to start soon. Such action may slow the pace of post grant procedures. News reports indicate that appeal judges are being asked to increase decision outputs and reduce pendency of appeals.
- New Secretary of Commerce Howard Lutnick: The new Commerce Secretary has traditionally been seen as patentee-friendly, having been named as an inventor on over 400 patents (most of which are finance-related). As the president’s primary advisor on patent and trademark issues, his appointment signals the administration’s strong support of intellectual property rights.
Many commentators in the patent community believe that patent eligibility standards will improve with Secretary Lutnick at the helm of Commerce. However, practitioners should not expect changes immediately – even with respect to § 101. The USPTO examiner corps is in a fluid situation given the multiple personnel-related changes. Generally, patent applicants may prefer delayed prosecution to accelerated prosecution, particularly for borderline technology areas. While software patent applications remain viable, applicants should continue to include explicit descriptions of technical advantages that tie directly into the claims.
Proposed legislation
Promoting and Respecting Economically Vital American Innovation Leadership (PREVAIL) Act
In May 2025, Senators Thom Tillis and Chris Coons reintroduced the PREVAIL Act. Originally introduced in the Senate in July 2023, the act was voted out of the Senate Judiciary Committee and onto the Senate floor in November 2024 before stalling. Generally, the PREVAIL Act is aimed at curbing the perceived petitioner-friendliness of the PTAB. It brings many PTAB policies and procedures in line with those of federal District Courts and would further reduce potential overlap between proceedings at the PTAB and in other forums.
It would introduce the following changes, among others:
- Standing requirement: Only those sued or threatened by a patent could use inter partes review (IPR) to preemptively challenge that patent’s validity.
- Limits to duplicate attacks: The act would prevent an entity from helping fund one IPR, then bringing a separate IPR challenge later. After challenging a patent using an IPR, challengers could not also seek to invalidate that patent in federal district court, the International Trade Commission, or elsewhere.
- Limits to duplicate arguments: To allow IPRs based on evidence or arguments previously presented to the PTAB, the act would require “exceptional circumstances.”
- Higher burden of proof: The act would require that patents be proven invalid by “clear and convincing” evidence (not just by a “preponderance” of the evidence).
- End USPTO fee diversion: The act would allow fees paid to the USPTO to be used only for USPTO activities (rather than the current practice of distributing some of this money to other government entities).
For more information about the PREVAIL Act, please see “Eleven Ways the PREVAIL Act Would Alter PTAB Practice.”
Patent Eligibility Restoration Act (PERA)
Senators Tillis and Coons reintroduced PERA simultaneously with the PREVAIL Act. PERA is aimed at clarifying patent eligibility under 35 U.S.C. § 101 by abrogating the Mayo/Alice framework and replacing it with the following categories of exclusions to patent eligibility:
- A mathematical formula standing alone (that is, if not claimed as part of a useful process, machine, manufacture, or composition of matter)
- A mental process performed solely in the mind of a human being
- An unmodified gene as it exists in the human body
- An unmodified natural material as it exists in nature
- A process that is substantially economic, financial, business, social, cultural, or artistic (even if a step in this process refers to a machine or manufacture) UNLESS the process cannot practically be performed without the use of a machine or manufacture (e.g., a computer or other man-made device).
While PERA would revert the patent eligibility analysis to the text of § 101 and away from the Mayo/Alice two-step framework, the proposed exceptions nonetheless hew closely to the current judicial exceptions.
Realizing Engineering, Science, and Technology Opportunities by Restoring Exclusive Patent Rights (RESTORE) Act
Originally introduced in July 2024, Senators Coons and Tom Cotton reintroduced the RESTORE Act in February 2025. The RESTORE Act would amend § 283 to add a rebuttable presumption in favor of an injunction in patent litigation:
Rebuttable Presumption—If, in a case under this title, the court enters a final judgment finding infringement of a right secured by the patent, the patent owner shall be entitled to a rebuttable presumption that the court should grant a permanent injunction with respect to that infringing conduct.
Proponents of the act believe that it will strengthen patent rights by providing a more definitive enforcement path for U.S. patents.
Information disclosure statement fees
As of January 19, 2025, the USPTO is charging higher fees across the board. For information disclosure statements (IDSs), the Office charges a fee when each threshold number of references is exceeded. (See table below.)
To illustrate, citing 50 references is free. But citing a 51st reference now costs $200. If the applicant later added a 101st reference, the applicant would owe another $300 for a total IDS fee of $500.
To mitigate the impact of these fees, applicants may consider discontinuing the practice of citing references in a continuation application that they previously cited in the parent application, as well as excluding references that are clearly irrelevant, marginally relevant, or cumulative.
Section 101 and appeals
A rejection under § 101 means a patent examiner thinks an invention is not eligible for patent protection because a claim recites a law of nature, natural phenomenon, or abstract idea. Section 101 rejections are of particular importance for software and artificial intelligence (AI) inventions because, unlike other technologies (e.g., mechanical innovations), software and AI can often be characterized as abstract ideas. If the applicant believes the examiner is incorrect on § 101 grounds, they may appeal the decision. However, statistics suggest that only very strong cases should be considered for appeal because the Patent Trial and Appeal Board (PTAB) generally affirms § 101 rejections. Based on our original research, if an examiner is reversed at the PTAB, it likely will be under Step 2A of the USPTO’s patent eligibility framework (i.e., the appellant successfully persuades the PTAB that there is a practical application of the abstract idea). Step 2A is the main tool for fighting § 101 rejections at the PTAB, as the last substantive reversal on Step 2B was in November 2020.1
Discretionary denials at the PTAB
The PTAB has the discretion to deny institution of IPR and post-grant review petitions for non-substantive reasons – for example, on the ground that the District Court in a parallel proceeding involving the same patent could resolve a patentability issue before the PTAB could. Strategizing around discretionary denial is a major component of post-grant practice, and discretionary denial rates and procedures have varied over the years. The most recent update was in March 2025, when the USPTO made significant revisions to how discretionary denial is handled at the PTAB.
Under these revisions, parties to post-grant proceedings are now allowed separate briefing on discretionary denial, with discretionary denial arguments being heard by the Director and at least three PTAB judges before arguments on the merits and other non-discretionary matters.
In their discretionary denial briefs, the parties may address the following issues:
- Whether the PTAB or another forum has already adjudicated the validity or patentability of the challenged patent claims
- Whether there have been changes in the law or new judicial precedent issued since issuance of the claims that may affect patentability
- The strength of the unpatentability challenge
- The extent of the petition's reliance on expert testimony
- Settled expectations of the parties, such as the length of time the claims have been in force
- Compelling economic, public health, or national security interests
- Any other considerations bearing on the Director’s discretion
One potential effect of these changes is to strengthen patentholders’ rights by making institution of patent challenges more difficult.
For more information about how the new discretionary denial scheme might impact practitioners, please see “What to Know About the PTAB’s Discretionary Denial Shakeups.”
Expedited issuance
In April 2025, the USPTO announced that the time between the receipt of an issue notification and the issue date of patents would decrease from three to two weeks. The stated rationale is that the decrease is part of a larger effort of modernization and streamlining at the USPTO, although it is unclear which steps are being removed from the process. Practitioners should thus consider providing issue fee and continuation instructions at the same time, filing continuation applications prior to filing issue fees for parent cases, and using “no fee” continuations when instructions are unknown.
Takeaways
While still early, changes in Congress and the Commerce Department leadership may strengthen patents and improve eligibility standards, while recent changes to discretionary denials may strengthen patentholders’ rights by making institution of post-grant challenges more difficult. In the short-term practitioners should keep the following in mind:
- In an IDS, consider not citing references (i) in a continuation application that were previously considered in the parent application (MPEP 609.02) and (ii) that are “clearly irrelevant, marginally relevant, or cumulative information.”
- For software applications, continue to include explicit descriptions of technical advantages that tie directly into the claims.
- In view of expedited issuance, provide issue fee and continuation instructions and recommendations at the same time. Continuation applications should then be filed prior to filing the issue fee, and “no fee” continuations should be filed when instructions are not known.
