William Jaffe Presents 2026 Update on USPTO Pendency and AI Eligibility

Examining how USPTO staffing constraints and evolving §101 guidance are reshaping prosecution strategy for AI and software inventions

“Effective client counseling for AI inventions now requires planning for longer and less predictable examination timelines, while drafting claims that anticipate current §101 scrutiny.”

On March 18, William Jaffe presented a briefing to European and U.S. patent practitioners on key developments at the U.S. Patent and Trademark Office that are shaping patent prosecution strategy in 2026. The presentation focused on two areas of immediate relevance to AI  and software related inventions: examination pendency at the USPTO and evolving subject matter eligibility guidance under 35 U.S.C. §101. 

On pendency, the discussion highlighted how workforce disruptions, hiring constraints, and examiner capacity challenges are contributing to longer and more variable timelines for first office actions and overall prosecution. These staffing driven impacts were framed in terms of their practical consequences for prosecution planning, cost management, and client expectation setting. 

The presentation also reviewed recent USPTO memoranda addressing subject matter eligibility for AI and software inventions. Topics included the USPTO’s operational §101 framework, efforts to avoid overbroad eligibility rejections, and practical considerations for drafting and prosecuting AI related claims in light of current examiner practices.