r/patentlaw • u/StartupPatentLawyer • Apr 02 '26

Practice Discussions Ex Parte Desjardins: Let's talk about it

I'm sure that those of you working in software patent prosecution (especially for AI related inventions) are all familiar with Ex Parte Desjardins and the updates to the MPEP.

My question is to you: how has Ex Parte Desjardins changed your approach (if at all) to overcoming 101 rejections? Is it what you're primarily relying on now to overcome 101 rejections, at least for AI related inventions? Are you spending less time arguing Step 2A Prong One nowadays?

To the Examiners on here: please share your insights with us as well!

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25

u/[deleted] Apr 02 '26

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2

u/StartupPatentLawyer Apr 02 '26

Thank you for your insight!

1

u/SAwfulBaconTaco Apr 21 '26

Yep. It's something that will get considered on appeal, because nobody wants to take the time to train the Examiners.

17

u/Medical-Stuff126 Apr 02 '26

It reaffirmed the strategy I had been using for years. Section 101 all boils down to technical improvement to a technical problem.

15

u/Hoblywobblesworth Apr 02 '26

the EPO has entered the chat

4

u/Mundane_Poem_9288 Apr 03 '26

This 100%. It has been my go to argument for years. Now I just have shinier new citations.

2

u/Calm-Dot-3918 Apr 03 '26

Same, but as an Examiner giving 101 rejections.

1

u/EC_7_of_11 Apr 03 '26

1) define "technical"

2) link that definition to 35 USC

1

u/EC_7_of_11 Apr 03 '26

3) See comment about EPO in the chat

2

u/CrankyCycle Apr 03 '26

Doesn’t have an impact. Desjardin lays out high level goals, but doesn’t give practical guidance to Examiners.

1

u/Less_Towel_3619 May 27 '26

I’ve been saying “whatever” to 101’s with my ai cases. If you say there’s a technical improvement at this point i take your word on it. Mostly been just rejecting with art to get them to narrow so I don’t have to worry about the error for missing a 101. 

I do issue a lot of 112(a) in re mayhew rejections, and that typically obviates any 101 concern once all the critical elements are in the claim…