Patent prosecution before the United States Patent and Trademark Office (USPTO) is changing. It is becoming more strategic and more front-loaded. The practical consequence is that decisions practitioners once deferred until later in prosecution increasingly need to be made earlier. Restriction practice, first Office Actions, Examiner interviews, § 101, artificial intelligence, Requests for Continued Examination (RCEs), continuations, appeals, and client counseling all now require earlier strategic attention. Prosecution strategy should begin before the first substantive response, not after final rejection.
This shift is occurring against a changing institutional backdrop. Recent USPTO developments include workforce and organizational changes, changed Examiner production expectations, backlog pressure, and increased variability among Examiners, Art Units, and Technology Centers. Efforts to reduce pendency and address backlog create tension between faster examination and meaningful examination. The human element remains important as well. Examiner morale, workload, experience levels, and institutional constraints can affect interviews, after-final practice, Examiner’s amendments, responsiveness, and willingness to engage in substantive discussions. Practitioners should therefore build flexibility into prosecution strategy and recognize that interactions with Examiners is not merely procedural. It is strategic.
USPTO Restriction Practice and Continuation Strategy
Restriction practice is one area where earlier decision-making matters. Restriction practice remains theoretically tied to consideration of independent or distinct inventions and a serious search or examination burden to consider all of the claims. Practitioners are seeing more restriction requirements overall and, in some cases, unusual restrictions that may reflect difficulty applying unity-of-invention principles. The production environment and AI-assisted tools may be contributing factors to the more traditional restriction challenge of junior Examiners simply trying to reduce the number of claims requiring examination. The bottom line is that restrictions are affecting prosecution earlier and more often.
The practical response is often not to traverse. Instead, Applicants should make the best election and preserve options. An election should be treated as a business and portfolio decision, not an administrative checkbox. Consider electing the claim set that best tells the story of the application in a manner which will educate the Examiner as to its value and patentability. This may facilitate more efficient early prosecution and better positioning for divisional applications that may follow. Where there are distinct embodiments it also makes sense to pursue the most clearly commercially important embodiment now, deferring decisions on embodiments which have not yet commercially matured. Even when accepting the restriction, there are benefits to adding dependent claims to the elected claims that capture restricted or canceled concepts, thereby obtaining initial searches and feedback on those concepts that may inform future continuation or divisional decisions. Similarly, when presented with a species election, which currently are often based on the figures or specification rather than an effective consideration of the claims, there is frequently an opportunity to elect a species that covers the bulk of the clamed subject matter, leading to more efficient prosecution.
Continuation and divisional planning also needs to happen earlier. The PTO has noted that, as a policy, continuations and divisionals are to no longer be taken up out of order with original applications, reducing the quick turnaround practitioners previously expected. Deferring important subject matter into later filings may carry more timing risk. Continuations and divisionals remain important tools to preserve non-elected inventions, alternative claim scope, and portfolio value, but practitioners should not assume they will provide the same quick second examination path practitioners may have expected in the past. In some instances, this can be a benefit, by delaying longer term prosecution costs to allow more insight from the marketplace, but just be sure those costs do not come as a surprise. Timing, business value, and examination delay should be part of the initial strategy considerations.
First Office Actions and Examiner Interviews in Patent Prosecution
Due to the intersection of what appear to be Department of Government Efficiency (DOGE) driven Examiner efforts to minimize any work done after a Final Office Action is issued and the Office’s creation of hurdles to gain Examiners’ credit for more than a single interview, the first Office Action is increasingly the main event. Practitioners should use the first Office Action as a roadmap to identify the real dispute, consider amendments earlier, build fallback positions, preserve meaningful scope, and test amendments through interviews. The first response should not answer every Examiner assertion with equal force. It should focus on the issues that actually control allowance, preserve commercially meaningful scope, and avoid unnecessary prosecution-history risk. One current practical risk is that prosecution may effectively end after the first response unless an RCE is filed, potentially limiting each RCE to one meaningful exchange with the Examiner.
As a result, Examiner interviews need to move earlier. The traditional “respond in writing first, interview later” approach is becoming less efficient and less effective. Because meaningful engagement may end after the first written response, Applicants should consider interviewing after the first Office Action and, ideally, before filing the response. For best effect with this tactic, a strong interview agenda should function like a light draft response. It should include proposed claim amendments, supporting arguments, and fallback positions. The interview allows the Applicant to test arguments and amendments, obtain immediate Examiner feedback, and develop and file what is effectively a second response as the written response. Applicants exercise caution once a Final Office Action is issued. They should no longer assume interviews will be granted or amendments entered, making it important to resolve patentability issues before final rejection whenever possible. A robust early interview can create an extra cycle, providing the cleanest opportunity to address those issues and work towards resolution.
Section 101 Eligibility, AI, and Patent Prosecution Strategy
Subject matter eligibility is another area where the tone appears to be changing. Director Squires stated that “[t]he onrush of technology knows no bounds” and identified crypto, AI, quantum computing, and diagnostics as “applied and patent-eligible technologies driving the frontiers of knowledge.” He also stated that the “USPTO is open for business — especially for the technologies of tomorrow.” Director Squires has further stated that “the proper statutory tools for limiting the scope of patents are §§ 102 (novelty), 103 (obviousness), and 112 (written description and enablement),” and that “Section 101 should not be misused as a blunt instrument to exclude entire technological fields,” including artificial intelligence, biotechnology, and data science.
Practically, § 101 rejections may be more winnable, particularly where claims clearly recite a technological improvement, but outcomes will still vary by Examiner, Art Unit, Technology Center, and claim drafting. For practitioners, the reported increase in PTAB reversals after Ex parte Desjardins means appeal may deserve renewed consideration in appropriate § 101 cases, particularly where the claims recite a concrete technological improvement.
At the Examiner level, recent PTO guidance gives practitioners useful language for framing eligibility arguments. The August 4, 2025 memorandum reinforces that Examiners should analyze claims as a whole, avoid oversimplification, and distinguish claims that merely involve an exception from claims that actually recite one. The December 5, 2025 Advance Notice requires evaluation of the claim as an ordered combination and warns against dismissing meaningful technical limitations at too high a level of generality. While on the surface these are traditional platitudes, on the ground these appear to actually be having an impact on both the Examining Corps and the PTAB in a positive way.
Practitioners should also preserve favorable eligibility reasoning. If the Examiner identifies features supporting eligibility, practitioners should think carefully before amending those features away in response to § 102 or § 103 issues. They should consider whether amendments change the technological improvement identified by the Examiner and remember that prosecution history may become a record of why the claims were considered eligible. If Applicant continues to struggle with subject matter eligibility at the Examiner level, Subject Matter Eligibility Declarations may be helpful to support technological improvement, state of the art, skilled-artisan understanding, integration into a practical application, and nexus between the evidence and the claims.
AI is increasing the volume of information in prosecution. AI-assisted searching may lead to broader or more sophisticated searches, more references, and more technically relevant prior art, but more prior art does not always mean a stronger rejection. Practitioners should focus on the references and claim limitations that actually matter to the rejection, rather than treating every cited reference as equally important. Responses should remain focused, avoid unnecessary concessions, and reduce prosecution-history-estoppel risk through disciplined argument.
Finally, practitioners should decide earlier whether to keep fighting in the same application. They should assess whether another RCE is likely to produce progress, whether appeal is appropriate, and whether further amendment is commercially acceptable. Escalation options may include the Examiner, SPE, ombudsman, petition, appeal, and other PTO mechanisms. Not every PTO problem requires a fight. The goal is to choose the mechanism most likely to obtain meaningful protection efficiently.
These developments also change how practitioners should counsel clients. Clients may need to make earlier decisions about claim scope, amendments, continuations, divisionals, RCEs, and appeals. Effective prosecution now requires earlier engagement, focused responses, preservation of favorable eligibility reasoning, careful use of AI, and portfolio-wide decision-making. The most effective results are obtained by not simply prosecuting the pending application, but by keeping in mind protecting the client’s broader commercial position in a changing USPTO prosecution environment.
For patent applicants navigating a changing USPTO prosecution environment, early strategic decisions involving restriction practice, Examiner interviews, Section 101, continuations, RCEs, and appeals can help preserve meaningful claim scope and portfolio value. Contact Conley Rose to discuss how your organization can develop a practical patent prosecution strategy aligned with its broader commercial objectives.