Juristat had front row seats to the impact these shifts had on patent practitioners. Here are 10 things you need to know.
In October, the USPTO moved IPR and PGR institution authority from PTAB panels to the Director’s office. That re-centralization reduced institution likelihood, especially where district court litigation or repeat challenges exist.
The USPTO also tightened discretionary-denial rules and reinforced real party-in-interest disclosures. Petitioners now face more scrutiny up front.
File earlier if you still plan to use IPR as part of a litigation strategy.
Assume more front-loaded diligence and a higher bar for institution.
The USPTO signaled an efficiency-first posture with programs like ASAP! (Automated Search and Pre-exam), the Streamlined Claim Set pilot, and shorter issue-notification timelines. It also sunsetted low-use programs like Accelerated Examination.
Faster processing does not automatically mean better outcomes. It means less time to course-correct.
Pressure-test your intake and drafting workflows.
Use examiner and art unit intelligence earlier, not after the first rejection.
The January 2025 fee increase hit across the board, including excess claim fees, RCEs, IDS submissions, and continuation filings. Design patent fees also jumped.
Applicants responded. Many filed fewer speculative applications, streamlined claim sets, and re-evaluated whether continuations still pay for themselves. Some leaned into provisional-heavy workflows to delay cost exposure.
Model prosecution cost like any other business spend.
Audit what drives your “hidden” costs: long claim sets, serial RCEs, and continuation chains.
Firms and in-house teams actively used AI in 2025 to draft filings, manage IDS submissions, classify portfolios, and run prior art searches. Some tested GenAI for office action responses and claim drafting.
Clients noticed. In-house teams started expecting AI-driven cost savings and consolidated outside counsel lists accordingly.
At the same time, the USPTO’s guidance drew a brighter line: AI can assist, but it cannot invent. Inventorship still requires human contribution.
Treat AI governance as part of quality control, not “innovation theater.”
Assess the data your AI is built on. If you’re using a generic AI tool, you’ll only get generic answers. Implement AI specialized in patent practice, and track reduced cycle time, RCEs, and total prosecution spend.
A new USPTO Performance Appraisal Plan changed incentives. As of Q4 2025, examiners receive credit for only one interview per case unless later discussions clearly advance prosecution.
That shifts the math. You cannot assume you will get multiple productive bites at the apple.
Make the first interview count.
Show up with a clear allowance path, examiner-specific data, and a written follow-up that documents progress.
The USPTO rolled out changes that rebalance how examiners handle 101 rejections. A new examiner memo raised the threshold for issuing 101 rejections. The Office also formalized Subject Matter Eligibility Declarations (SMEDs), giving applicants a tool to rebut eligibility denials with factual evidence.
Alongside MPEP updates and the Desjardins decision, the direction signaled a more balanced approach, especially for software and AI claims.
Stop treating 101 as a pure legal-argument exercise.
Pair eligibility arguments with record evidence and technical implementation details.
Fee hikes and budgeting scrutiny prompted teams to question long filing chains. The USPTO made continuation dependency more expensive. In-house teams are increasingly challenged whether the costs match the value.
Outside counsel felt the pressure. The market pushed firms to file stronger initial claims and avoid strategies that create unnecessary RCEs or serial continuations.
Audit active CON chains and identify where to consolidate or close.
Push more claim strategy into the first filing so you are not buying leverage later at a premium.
If you manage budgets, you already felt this. In-house teams faced pressure to cut 10% to 20% of spend or do more with flat budgets. That pressure reached outside counsel fees fast.
Companies began consolidating, they reduced the number of patent firms they use and told them to keep fees flat or cut them, insisting on AI implementation and process changes to get there.
Teams stopped “set it and forget it.” They reviewed pending work, asked whether cases took too long, and got more prescriptive about abandon, interview, and appeal decisions.
Patent practitioners use data, like that available from Juristat Analytics, to surface which firms drive allowances faster, which ones inflate prosecution cost, and where firms are strategic partners, not just paper filers.
Take the time to build an outside counsel scorecard. Use historic data to track RCE rates, time-to-allowance, and how often a case exceeds your planned cycle.
To better align strategy, some teams now publish “IP policies” that tell firms when to abandon, when to interview, and when to appeal. That cuts drift and reduces unpredictable bills.
Want to see how to create your own IP policies? Download our guidebook.
Firms that show business alignment are rewarded. Corporate IP leaders increasingly evaluate firms on value and strategic fit, not volume.
Ask yourself one uncomfortable question: Are you paying premium rates for routines you could standardize?
Corporate IP leaders now expect outside counsel to connect filings to business goals, including product roadmaps, competitive pressures, and revenue impact.
Firms increasingly compete on value, not volume. Practitioners use examiner behavior, art unit data, and prosecution outcomes to prove fit before the first serious conversation.
If you are in-house, demand evidence that a firm’s strategy fits your business priorities.
If you are in a firm, show outcomes in your pitch, not promises.
The year-end message from the market is blunt. The days of filing for coverage’s sake are over. Patent teams now need to connect IP actions to business value.
At the same time, corporate IP leaders evaluate outside counsel based on efficiency, insight, and strategic alignment, not how much they can file.
Pick a strategy you can measure.
Track it with the industry’s leading patent database, which reflects real outcomes, not anecdotes. See where you can stay ahead of the trends with Juristat Analytics, book a portfolio review today.