Insights

A USPTO decision disclosed on 3 May tightens the link between inter partes review and ex parte reexamination. The key point is the timing of estoppel under 35 U.S.C. § 315(e)(1): a request for reexamination is not treated merely as a filing made on a particular day, but as a pending request that continues until the Office orders reexamination under 35 U.S.C. § 304.

That reading narrows a familiar strategy: challenge the patent first through IPR, then use ex parte reexamination as a second route if the IPR record begins to look unfavourable. If the IPR final written decision has already issued and the Office has not yet ordered reexamination, the requester may be barred from pursuing reexamination on the same grounds, or grounds that reasonably could have been raised in the IPR. Timing now affects not only efficiency, but whether the procedural path remains open at all.

The USPTO’s recent memorandum on Rule 132 Subject Matter Eligibility Declarations puts a sharper lens on a familiar but often underdeveloped argument in AI, software and biotechnology patent prosecution: whether the claimed invention improves technology rather than merely using a computer to reach a desired result. The agency is not creating a separate patentability regime for AI. It is asking applicants to connect eligibility arguments to technical facts already disclosed in the application.

For applicants, the practical message is direct. Describing an AI model that classifies, predicts, generates or supports a decision will rarely be enough on its own. The specification and any supporting declaration should explain how the invention makes a computer system, data-processing workflow, training process or diagnostic procedure faster, cheaper, more stable or more efficient.

At its early-May anniversary events, EUIPO signalled a firmer approach to trade mark filings covering NFTs, virtual goods and related Web3 services. The issue is no longer limited to whether the specification is precise enough. In disputes, applicants may increasingly need to show that their filing was backed by a credible intention to use the mark in a real digital business.

That shift matters for brand owners, platform operators and applicants seeking early positions in virtual markets. Where an applicant cannot produce an initial business plan, product roadmap or other preparatory materials linking the mark to Web3 activity, the filing may face a higher risk of being characterised as bad faith in opposition or invalidity proceedings.

During the INTA Annual Meeting held from 2 to 6 May, WIPO presented a new digital management environment, with eMadrid placed at the centre of a more guided filing experience. The upgraded environment is expected to support smarter classification suggestions and automated risk searches, giving applicants an earlier warning when goods and services descriptions may trigger provisional refusals in designated Madrid members.

The practical message is plain: a cleaner filing record is becoming part of the applicant’s own responsibility, not just an issue for later examination. Companies using the Madrid System should review specifications against the base mark and the likely practice of key target offices before filing, rather than relying on post-filing corrections. WIPO’s reference to a transparency labelling plan aligned with the EU AI Act also points to a broader shift, where AI-assisted IP administration will increasingly need visible disclosure, traceability and compliance controls.

China’s National Intellectual Property Administration, together with the Ministry of Public Security and the State Administration for Market Regulation, has rolled out an action plan to make 2026 a nationwide “Year of Rectification and Standardization” for the intellectual property agency industry. The plan goes beyond another short enforcement push: it targets bad-faith patent and trademark filings, unlicensed practice, certificate lending, falsified materials, improper client solicitation, and weak gatekeeping at the approval and recordal stages, while also tying in credit-based and data-driven supervision.

The practical message is that agency regulation in China is becoming more continuous and more granular. Firms that still rely on volume-driven filing, loose internal controls, aggressive marketing language, or questionable staffing arrangements may find that those weaknesses are easier to detect and harder to explain away. For businesses using external agents, cheaper is no longer safer by default; the quality of compliance, signature responsibility, and recordal hygiene now matters much more than before.

South Korea officially launched its pan-government one-stop reporting platform for overseas infringement on April 27, creating a single channel for Korean brands facing malicious trademark filings, counterfeits and online infringement in foreign markets. By bringing together customs, police and diplomatic resources, the platform is designed to shorten the distance between a complaint and an actual enforcement response.

That is more than an administrative update. For many K-Brands expanding abroad, the harder part has never been identifying the problem but moving quickly across borders once the problem appears. A unified reporting gateway could help reduce that lag, especially in cases involving online takedowns, counterfeit distribution and bad-faith filings. Still, the platform will work best for companies that have already done the basic homework: early trademark filings, clear ownership records and evidence capture. Without that, even a faster channel can only do so much.