As 2025 unfolds, changes across the patent landscape are unfolding. From agency leadership transitions to proposed legislation and evolving AI-related policies, these shifts could impact patent prosecution, post-grant proceedings, and strategic considerations for companies and practitioners. This LawFlash provides a high-level overview of key developments impacting proceedings at the USPTO, including (1) leadership and operational changes, (2) legislative initiatives, and (3) policy revisions.
Leadership changes at the US Patent and Trademark Office (USPTO) signal a shift toward a more patent-owner-friendly approach. However, accompanying operational adjustments—such as hiring freezes and revised Patent Trial and Appeal Board (PTAB) practices—introduce new challenges. Companies and practitioners should consider monitoring developments, including legislative initiatives on patent eligibility and PTAB proceedings and evolving AI policies, to effectively navigate the changing patent landscape.
Leadership and Operational Changes at the USPTO
On the first day of the new presidential administration, Coke Morgan Stewart was sworn in as acting director of the USPTO, and on February 18, 2025, the US Senate confirmed Howard Lutnick as the US secretary of commerce.
Most recently, on March 11, 2025, John Squires was nominated as the new director of the USPTO. Should Mr. Squires be confirmed, Acting Director Stewart would then serve as deputy director. Secretary of Commerce Lutnick is expected to bring a pro-business, patent-owner friendly face to USPTO leadership. He has pledged to reduce the backlog of patent applications before the USPTO—a commitment welcomed by applicants given that the current USPTO backlog averages total pendency of 26.2 months (measuring the time from filing to final disposition). [1]
However, efforts to reduce delays may be hindered by operational changes. The new administration’s hiring freeze has led to canceled job postings and rescinded offers for new patent examiners. Additionally, the return-to-office mandate may prompt examiner resignations, including in supervisory roles, further straining the USPTO’s ability to address its backlog.
The USPTO’s revised fee schedule, [2] which took effect on January 19, 2025, [3] may help alleviate backlog concerns by influencing patent-application filing strategies. New fees specifically targeting applications that claim benefit from filings older than six years could discourage some applicants from pursuing additional continuing applications.
Patent applicants interested in accelerating application timelines can take proactive steps to reduce potential wait times by utilizing the USPTO’s Track One prioritized examination. While the Track One program has limitations (e.g., fees and limitations on number of claims [4] ), USPTO data for fiscal year 2025 shows that this option provides significantly faster examination timelines compared to traditional patent filings. [5]
In line with the return-to-office mandate, the USPTO recently announced that, effective March 14, 2025, PTAB judges will conduct virtual hearings from a PTAB hearing room at a USPTO office unless special circumstances justify an alternative arrangement. This change appears to encourage a return to in-person PTAB hearings, and has also raised concerns about judge retention, particularly for those judges who had been working remotely. Therefore, as with the outlook for patent-application pendency reductions, practitioners before the PTAB should expect some bumps in the road as the USPTO’s new leadership rolls out changes and practitioners and agency personnel alike adapt to those changes.
Legislative Initiatives
With the shift to a patent-owner-friendly regime, several legislative initiatives are gaining attention. Among them are the Promoting and Respecting Economically Vital American Innovation Leadership Act (PREVAIL Act) and the Patent Eligibility Restoration Act (PERA). Both bills, if passed, could introduce significant changes to USPTO proceedings.
The PREVAIL Act aims to reform “rules and procedures at the Patent Trial and Appeal Board (PTAB) to better secure and advance U.S. technological leadership.” [6] Initially introduced in July 2023, the bill received a manager’s amendment in November 2024 and was later approved by the Senate Judiciary Committee. A key provision of the legislation is implementing stricter standing requirements to limit the number of petitions filed before the PTAB.
As originally drafted, the PREVAIL Act restricted PTAB challenges to entities that had been sued or faced the threat of a patent infringement lawsuit. However, concerns raised by some senators led to revisions in the November 2024 amendment, expanding eligibility criteria. The revised version now allows standing for entities currently engaging in or having a bona fide intent to engage in conduct that could reasonably be accused of infringement. It also extends standing to tax-exempt nonprofits, provided they meet specific conditions designed to prevent conflicts of interest with for-profit companies.
While the PREVAIL Act may impose new limits on PTAB proceedings, the PERA seeks to “restore patent eligibility to inventions across many fields.” [7] According to the PERA fact sheet from Representative Kevin Kiley, the bill aims to clarify US Supreme Court patent eligibility precedent by “retaining Section 101’s existing statutory categories for patent-eligible subject matter” and by “replacing the ambiguous judicially created exceptions with more clearly defined exceptions.” [8]
If enacted, these bills could reshape not only PTAB proceedings but also broader aspects of patent law, including how the USPTO evaluates patent eligibility during prosecution.
PTAB Discretionary Denial Policy Revisions
In proceedings before the PTAB, the Board has discretion to deny institution of inter partes review (IPR) or post-grant review (PGR) petitions in view of a parallel proceeding involving the same patent. In evaluating whether to exercise this discretion, the PTAB considers six factors—known as the Fintiv factors—established in the 2020 PTAB-precedential Apple Inc. v. Fintiv Inc. decision. [9]
In 2022, then-acting USPTO Director Kathi Vidal issued a memorandum entitled Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (the Memorandum), stating that discretionary denials should not be issued (1) where the petition presented “compelling merits” of unpatentability, (2) where the parallel proceeding was in the International Trade Commission (ITC), and (3) where the petitioner filed a Sotera stipulation. The Memorandum also stated the Board should consider median time-to-trial statistics in the district court for the parallel litigation when determining whether to discretionarily deny the petition.
On February 27, 2023, then-Director Vidal issued a precedential decision in CommScope Technologies LLC v. Dali Wireless Inc. clarifying that the “compelling merits” determination referenced in the Memorandum should not serve as a substitute for a Fintiv analysis. Instead, Fintiv factors 1–5 must first favor discretionary denial before the Board evaluates the compelling merits question. [10] If compelling merits are found, the Board must provide “reasoning sufficient to allow the parties to challenge that finding and sufficient to allow for review of that decision.” [11]
This Memorandum, even after the subsequent clarification in CommScope, resulted in a decrease in the number of Fintiv denials.
On February 28, 2025, the USPTO rescinded the Memorandum—stating that, to the extent any PTAB or Director Review decisions relied on it, those portions are no longer binding on the PTAB. As a result, practitioners and companies should anticipate a rise in Fintiv denials, potentially reaching levels seen before the 2022 Memorandum was issued. These changes also merit close consideration in evaluating whether and when to request PTAB review of patents that are also involved in a parallel proceeding.
Artificial Intelligence Policy Revisions
Policy revisions related to artificial intelligence (AI) may also impact the USPTO in 2025. The USPTO’s website currently provides a list of the existing USPTO guidance and training materials on AI-related issues. [12] These materials are categorized into several key areas: (1) guidance on practitioner use of AI; (2) inventorship; (3) subject matter eligibility; (4) compliance with 35 U.S.C. 112; and (5) the Artificial Intelligence Patent Dataset (AIPD).
Many of these guidance materials stem from President Joseph Biden’s executive order titled Safe, Secure, and Trustworthy Development and Use of Artificial Intelligence (Executive Order 14110). [13] This includes Guidance on Use of Artificial Intelligence-Based Tools in Practice Before the USPTO, which “inform[ed] practitioners and the public of the important issues that patent and trademark professionals, innovators, and entrepreneurs must navigate while using Artificial Intelligence (AI) in matters before the USPTO.” [14] It also includes Inventorship Guidance for AI-Assisted Inventions, which provided clarity for USPTO stakeholders and personnel on how the USPTO would analyze inventorship issues as AI systems continue to play a greater role in innovation. [15]
On January 20, 2025, the new administration revoked Executive Order 14110. Shortly after, on January 23, 2025, he issued a new executive order, Removing Barriers to American Leadership in Artificial Intelligence (Executive Order 14179). [16] This order calls for an immediate review of “all policies, directives, regulations, orders, and other actions taken pursuant to the revoked Executive Order 14110.” [17]
Given this evolving regulatory landscape, AI-driven companies should closely monitor the USPTO for forthcoming guidance to stay prepared for likely policy shifts and strategic adaptions that may result.
In sum, 2025 looks like a busy year for changes at the USPTO. The new leadership, operational changes, legislative initiatives, and AI-related policies may all influence USPTO proceedings, including efforts to prosecute patents and adversarial proceedings before the PTAB. While the full impact of these evolving factors remains uncertain, practitioners and companies should stay informed, remain vigilant for additional patent-owner friendly changes, and remain ready to adapt to the shifting patent-office landscape.
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[4] 37 CFR 1.102(e), “A request for prioritized examination under this paragraph (e) must comply with the requirements of this paragraph (e) and be accompanied by the prioritized examination fee set forth in § 1.17(c), the processing fee set forth in § 1.17(i), and if not already paid, the publication fee set forth in § 1.18(d). An application for which prioritized examination has been requested may not contain or be amended to contain more than four independent claims, more than thirty total claims, or any multiple dependent claim.”
[5] Patent Track One Data January 2025, USPTO, noting the average number of months from filing a petition for Track One to the date of mailing the Track One petition grant is 1.4 months, and the average time from the petition grant to final disposition is 4.5 months.
[6] The Prevail Act Will Help Ensue U.S. Global Technology Leadership and Protect Economic and National Security.
[8] Patent Eligibility Restoration Act (PERA) Would Provide Clear, Predictable Rules for What Inventions Are Eligibile for Patents.
[9] IPR2020-00019, Paper 11, PTAB (Mar. 20, 2020).
[10] IPR2022-01242, Paper No. 23, PTAB (Feb. 27, 2023).
[11] Id.
[12] AI-Related Resources, USPTO.
[13] Executive Order 14110, 88 FR 75191 (Nov. 1, 2023).
[14] Guidance on Use of Artificial Intelligence-Based Tools in Practice Before the United States Patent and Trademark Office, USPTO, Federal Register (Apr. 11, 2024).
[15] Inventorship Guidance for AI-Assisted Inventions, USPTO, Federal Register (Feb. 13, 2024).
[16] Removing Barriers to American Leadership in Artificial Intelligence, the White House (Jan. 23, 2025).
[17] Id.