This is the last episode of this season of Clause 8, and we recently crossed the 100-episode mark. When I started the show, I didn’t have a number like that in mind; I just wanted to talk to the people actually shaping the patent system.

I’ll save the proper thank-yous for the bottom. For now: it felt right to close the season with Kevin Mack, the new president of Via Licensing Alliance, for a conversation about where patent licensing is going in the age of AI — and why he’s optimistic about the future.

On this episode…

Modern patent pools have almost always formed around a formal standard, set by a standard-setting organization, with FRAND commitments attached.

But, on this episode, Mack describes a broader future for collaborative licensing. Via isn’t only looking at “black and white standards,” as he put it, but also at technologies that function like standards in the market even if no standards body ever formally declared them to be one.

Picture AI: if enough companies converge on the same techniques for the same reasons — the way they would around a formal standard, only without anyone declaring one — that technology starts to function like a standard, too. The difference is the patents around it are scattered and unresolved, with no clean map of who holds what. Mack's plan is to do for that what Via already does for formal standards — pull the relevant patents into a pool so the technology can be licensed in one efficient place, instead of fought over one dispute at a time.

Mack has worked the patent system from most sides — he prosecuted patents, litigated them at Skadden, and spent years at Dolby running compliance and sitting in the standardization rooms — and he now runs the administrator that the 2023 merger of Via Licensing and MPEG LA made the largest in consumer electronics. Dolby keeps turning up in Via's orbit — his predecessor, Heath Hoglund, came from there too and Kevin talks about the connection. He inherits an organization in motion. Hoglund and the previous chief licensing officer, Jane Bu, have joined other pool administrators. Via handed its HEVC pool to Access Advance, which Mack frames as the right call for an ecosystem where pool fragmentation helps no one. It's pushing into semiconductors, with a new pool announced in the fall and a DRAM memory program he says is close to launch. And he's stood up a strategy-and-growth group — presumably where the de facto-standards thinking is coming from.

His call for pools comes as some implementers seem to be searching for alternatives. AV1, the royalty-free video codec from the big tech–backed Alliance for Open Media, and — newer — SAIL, the Shared AI License Foundation, a royalty-free patent commons for “AI foundational models” launched this spring to at least create the appearance of taking patents off the table entirely.

Mack offers support for some of these initiatives but is candid that trying to create "a brand new technology that's competitive with the current marketplace without stepping on someone else's technology" can be "a little bit naive."

What keeps him optimistic is the policy weather: coming out of Via's recent summit in Rome, he reads the US posture as friendlier to patent owners than it's been in years — officials openly weighing injunctions for SEP holders, questioning whether an SEP automatically confers market power, treating rate fights as ordinary negotiations rather than antitrust problems. In his telling, the wind is finally at the patent owners' back — and that naturally creates a bigger need for licensing administrators like Via.

The episode covers:

• How Via’s model actually works — and the “tipping point” that turns a pool from a handful of licensors into thousands of licensees

• The leadership turnover, the HEVC pool’s move to Access Advance, and Via’s strategy-and-growth group

• Via’s push into semiconductors, including a new DRAM memory program

• “De facto” standards — why Via’s next pools may form around technology no standards body ever blessed

• AV1 and the royalty-free question, and why Mack thinks royalty-free rarely stays free

• SAIL, and whether AI patents are as “foundational” as advertised

• Efficient infringement, patents as property rights, and why so many companies ultimately take a license

• The mood out of Via’s summit in Rome — and a US patent system Mack sees tilting back toward patent owners

Eli again…thank you, thank you, thank you!

To everyone who made Clause 8 part of how they keep up with IP: thank you. That’s not a small thing, and I don’t take it for granted.

This was the season Clause 8 went all-in on video — a real in-person studio, in-person video recordings, and the official launch of the Clause 8 YouTube channel. AA few episodes found real audiences there faster than I'd expected. My producer Dustin and his PodTechs team made that leap possible and defined the future for the show.

There was also some nice outside recognition. Law360 recently put Clause 8 first in its roundup, 5 Podcasts to Keep IP Attys Entertained and Informed. (Feedspot has put Clause 8 again at the top of its IP podcast list.)

And a huge thank you to Tradespace for its generous support over the last two seasons. I had a lot of fun working together and helping them grow during a particularly eventful time for the market.

Next season, I’m looking forward to working with a wider set of sponsors to tell the story of what the AI boom will mean for the IP field.

Most of all, none of this would have been possible without YOU - the listeners (and viewers!). As I’ve said before, the podcast only exists because enough of you care about IP to listen (or watch!) in your free time. I’m beyond grateful for that.

And an extra thank you to everyone who helped share Clause 8 with others. Because of you, the show is still growing — and I’m excited to bring you more in future seasons.

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Disclaimer

When Bruce Lehman announced that he would step down as head of the USPTO in 1998, Teresa Riordan devoted her regular “Patents” column in The New York Times to Lehman’s time at the USPTO and observed that “defenders and detractors tend to agree on one point: That Mr. Lehman has raised the visibility of intellectual property by transforming what was formerly a bench-warming position into a prominent perch.” The Times has not covered another USPTO head’s departure in the same way since.1 And the Times stopped running the “Patents” column altogether in the early 2000s.2

It turned out that Lehman’s prominent tenure was more of an exception likely because of who he was rather than any lasting transformation of the role - and coincided with a high point of America’s modern appreciation for IP. Lehman, now happily retired in Florida, sat down with Eli Mazour at his home to record this special Clause 8 episode. Lehman shares his candid perspective on the role he played in the major IP developments of the modern era, his time as head of the USPTO during the dot-com boom, and what has followed, including the lessons he draws from dealing with the rise of the internet for today’s AI moment.

On the USPTO’s gallery of past leaders, Lehman’s is the first portrait in color — a small marker of where he sits in the agency’s history.

“I am a card-carrying member of the Deep State.”

Lehman was not a member of the patent bar — or, as he affectionately joked after the recording, a member of “the priesthood” — but was a man of Washington and deeply cared about IP issues when he was nominated by President Bill Clinton in 1993 to helm the USPTO. By that point, he had spent close to two decades focused on IP issues on Capitol Hill, starting as counsel to his home-state Wisconsin Rep. Bob Kastenmeier on the House Judiciary Committee, where he worked on major copyright legislation (including the 1976 Copyright Act), patent policy (including the Bayh-Dole Act), and supporting the broader government architecture that helped connect IP to American competitiveness.

During the episode, Lehman proudly says he was “a card-carrying member of the Deep State” and “a member of the club.” That mattered.

To the surprise of many, but not Lehman himself, he was unanimously confirmed by the Senate as the first openly gay man ever confirmed by that body — something he describes as “probably the most historic thing I’ve ever done.” He tells the story of Sen. Strom Thurmond wanting to personally explain why he was supporting him, and walking into the room behind the Senate Judiciary Committee chamber where he knew almost everyone there.

Those deep Washington relationships also explain why he was able to have a uniquely expansive impact on IP policy once he was confirmed as head of the USPTO, including on copyright even though that falls outside the official purview of the USPTO.

From inside the USPTO during the internet boom, he helped steer the WIPO Copyright Treaties — the foundation for what became the DMCA — and the TRIPS-era push that put IP at the center of Clinton's economic agenda.

New Copyright Legislation in the Age of AI?

Lehman delivered the legislative response to the internet boom. Asked whether the AI boom requires another, he doesn't hesitate.

That history makes Lehman’s critique of today’s environment more striking: the country that once pushed the world toward stronger IP protection is now often debating how far to weaken it.

Lehman sees this through what he calls the “patent pendulum” — the idea that US IP policy historically moves through cycles of strong and weak protection. In his telling, strong IP rights help create new industries. Those industries become dominant. Then the companies with market power often lose interest in strong IP rights because they no longer need them.

That, he argues, is where we are now. Lehman argues that courts have spent the last two decades weakening copyright through an expansive view of fair use. The result, in his view, is that AI companies are now using massive amounts of human-created content to train models without giving creators a meaningful stake.

He calls that “fundamentally immoral.”

So when asked whether new legislation is needed to protect creators in the AI age, Lehman did not hedge.

“The short answer is yes.”

Whether Congress in 2026 can pull off what it did in the 1990s is its own question. But the DMCA’s architect has a unique vantage point to argue that it should try.

The episode covers:

• The DMCA before it was the DMCA — how the Clinton administration’s internet copyright work became the foundation for the 1996 WIPO Copyright Treaties and later US legislation.

• TRIPS, WIPO, and the globalization of IP — how the US helped strengthen IP rights around the world in the 1990s, and why that history contrasts so sharply with today’s debates over patents, fair use, AI, and access to technology.

• Why Lehman thinks AI requires new copyright legislation — and why he believes courts have taken fair use too far.

• Limits of AI — why Lehman believes AI can process vast databases but lacks the “metaphysical” spark behind true invention.

• The “patent pendulum” — Lehman’s framework for understanding US IP policy as a cycle between strong-protection and weak-protection eras.

• Bayh-Dole and the rise of the university-to-startup pipeline — including why Lehman sees the statute as central to the development of modern Silicon Valley.

• Historic confirmation as the first openly gay man confirmed by the US Senate.

• How he turned the USPTO into a “prominent perch” for national IP policy, even though copyright formally sits outside the agency.

• Gilbert Hyatt, submarine patents, and SAWS — including Lehman’s view that Hyatt was “abused and mistreated.”

• USPTO’s telework & modernization for internet age — how the agency became an early large-scale telework test case and why Lehman thinks it transformed examiner retention and efficiency.

• His unvarnished take on today’s USPTO, including his message to leadership on how to treat the patent examiner corps.

• Judge Pauline Newman, who Lehman describes as a friend, a “sweetheart,” and “a thorn to a lot of her colleagues” because of her pro-patent views.

🎧 Watch the full episode above or listen on your favorite podcast app—and subscribe to the Clause 8 YouTube channel for bonus content.

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Disclaimer

The hope, widely held, was that this would get sorted out soon. The USPTO would provide clear guidance about how to avoid and overcome Section 101 rejections like they had in the past. The Federal Circuit would draw cleaner lines. Congress would step in.

The working theory was that, once that happened, you’d be able to get applications through the USPTO just by adding some magic language to claims and the specification. In anticipation of that, some practitioners even advised clients to file appeals within the USPTO to buy a year or two of time until that happened.

Ngai Zhang and I were separately coming to a very different conclusion: there had to be a new, better way to reliably obtain strong patents in this space.

That’s how I first met Ngai.

He reached out after he came across an early article I’d written about the impact of Alice and wanted to compare notes. Around the same time, Ngai had argued an oral hearing at the USPTO and walked out with a lesson that has guided his work ever since: examiners and judges form a snap judgment about what a patent application is really about. If that judgment is “business innovation,” you’ve already lost. The technical story has to be the first impression.

I was coincidentally coming up with and writing about strategies for doing that.

Over time, it became clear that the hoped-for reset never came. Many applicants and practitioners continued to draft and file patent applications focused on business use cases, with some technical language added at the beginning or the end. Those applications often landed in business method art units, ran into repeated Section 101 rejections, and had to be abandoned. And even when some were allowed, they were often not the kinds of patents you would want to depend on in litigation.

The problem also did not stay confined to business method inventions, which became especially important as AI-related inventions took off. Although the USPTO’s 2019 guidance significantly improved at least how Section 101 was applied at the agency, later shifts at the USPTO limited that reprieve. As I’ve written before, Section 101 rejection rates soared in AI-related art units, raising many of the same issues we had been dealing with in the business method context.

It wasn’t long before Ngai and I realized our approach — rethinking things from the ground up rather than just following what other practitioners had done in the past — extended well beyond Section 101. We started exchanging strategies on every part of the practice: examiner interviews, unconventional amendment strategies, claim drafting, and how to draft for both prosecution and litigation.

Eventually, I joined Ngai at Foley & Lardner so that we could implement these strategies together. We’ve kept having these conversations, and finally decided to record this episode to share that story - and the strategies - more broadly.

But this is not just a look back at how Alice forced us to rethink patent prosecution.

It is also a conversation about what comes next.

The same team that was built around solving hard Section 101 problems for business method inventions is now focused heavily on AI — both as a patenting challenge and as a tool that may reshape patent practice itself.

We talk about tools for AI-assisted drafting and prosecution, patent quality, and why judgment, communication, and human interaction may matter even more as the tools get better.

On this episode, Ngai and I also discuss:

• Why relying only on art unit prediction tools & wordsmithing is a losing strategy for § 101

• Why claim 1 shouldn’t be your broadest claim

• How taking features out of independent claims can help advance prosecution - and how the strategy also leaves clients pleasantly surprised by the breadth of the allowed claims

• Examiner interviews as hostage negotiations: Ngai’s framework based on Chris Voss’s Never Split the Difference

• Where and why Ngai and I differ on whether to push for an explicit on-the-record agreement before ending an examiner interview

• AI as a collaborator for patent drafting and prosecution

• What AI changes — and does not change — about the role of patent lawyers

• The importance of human interactions and communication for patent prosecution even in the age of AI

  Voice of IP has more — new Clause 8 episodes, original reporting, and the occasional take on what's happening at the USPTO. Free to subscribe.

🎧 Watch the full episode above or listen on your favorite podcast app—and subscribe to the Clause 8 YouTube channel for bonus content.

📌 Presented by Tradespace — where ideas take flight.

Disclaimer

This is the Clause 8 Eight: Government Officials Edition. Countdown from eight to one.

The Clause 8 Eight is a new Voice of IP feature. Disagree with the ranking? Think someone’s missing? Have ideas for future installments? Send them our way: eli@VoiceOfIP.com.

#8 Darrell Issa Chair, House Subcommittee on Courts, IP, AI, and the Internet

For years after the America Invents Act (AIA) passed, Congressman Issa carried the congressional baton on what he characterized as the continuing “patent troll” problem, pushing legislation in that direction that largely went nowhere. As the current USPTO has moved in a more pro-patent direction, his influence in shaping the agency’s trajectory has waned, and his recent hearing meant to raise alarm about the USPTO’s changes with regards to post-grant proceedings at the Patent Trial and Appeal Board (PTAB) largely fell flat. But as chair of the House’s IP Subcommittee, Issa remains a gatekeeper for any patent legislation hoping to move through the House. Whether he finds common ground with the Senate to make a lasting legislative impact before the end of his time in Congress remains the open question.

🎙️ Related: Issa’s Chief IP Counsel John Lee

#7 Dina Kallay Deputy Assistant Attorney General, DOJ Antitrust Division

Kallay has emerged as one of the most vocal voices within the current administration on the importance of patents in securing American technological leadership. Her speeches at the DOJ have staked out a position firmly on the side of innovators in the standard-essential patent (SEP) debate — including pointed remarks about the anti-competitive risks of so-called “royalty-free” licensing initiatives — and have been noticed by the innovation community. As Professor Kristen Osenga noted in a recent Clause 8 episode, Kallay’s pronouncements send a meaningful message in how the antitrust division is thinking about patent rights and standards.

🎙️ Related: The Hidden Costs of “Free” Patent Licensing Initiatives

#6 Judge Alan Albright U.S. District Court, Western District of Texas*

Judge Albright has spent his time on the bench as a one-man powerhouse proving that patent cases can be handled as expeditiously outside the EDTX as inside it. What makes his story notable is what he did — and didn’t do — when the pressure came. After an intense campaign targeting his Waco docket, the then WDTX Chief Judge implemented rules in 2022 to randomly reassign new patent cases filed there. Albright moved to Austin — and kept right on handling patent cases with the same approach. While others bent to the pressure, he continued doing what he believed was right. Whatever one thinks about where patent cases should be litigated, Albright stands as a notable example of judicial independence and a reminder of what a federal judge should look like when the pressure is on.

He has also created a playbook for other federal judges who believe that patent cases, like any other cases, should be resolved in a reasonable time. And even for judges who don't adopt his approach, Albright has set a standard they're now aware of — a benchmark for what efficient, predictable resolution can look like.

*Note: This list was finalized before Dani Kass of Law360 broke the news that Judge Albright will step down from the bench at the end of this summer. His impact on patent litigation — and on the standard set for resolving patent cases efficiently — will remain.

🎙️ Related: On Becoming the Go-To Judge for Patent Cases

#5 Nicholas Matich Solicitor, USPTO

You usually wouldn’t expect the USPTO Solicitor to make this list. But Nick Matich isn’t the usual USPTO Solicitor. He served at the USPTO during the last administration and joined the USPTO shortly after Coke Morgan Stewart as acting general counsel before being named Solicitor. Stewart herself has repeatedly credited Matich for his contributions in steering US patent policy in a new direction. The record: in partnership with Stewart, he has compiled a perfect record defending the USPTO’s PTAB-related actions at the Federal Circuit. Beyond the courtroom, Matich has been the architect of the PTAB rules package designed to ensure the changes being put in place now survive beyond this administration. It’s a priority he has pursued from the earliest days of the administration — drawing on lessons from his own previous time at the USPTO, when he watched much of what Director Andrei Iancu accomplished on the PTAB get unwound after the administration changed. As co-chair of the USPTO’s new SEP Working Group, Matich is also helping elevate standards policy as a matter of national importance.

🎙️ Related: Nick Matich on Rulemaking

#4 Senators Thom Tillis & Chris Coons U.S. Senate IP Subcommittee (tied)

No two people have done more to shape the congressional conversation around patent policy in recent years than Senators Tillis and Coons. The three major patent bills currently before Congress — PERA on Section 101, PREVAIL on PTAB reform, and the RESTORE Act on injunctions — are largely products of their efforts. That represents a significant shift from the post-AIA era, when the dominant congressional conversation was about cracking down on so-called “patent trolls.” Even with Tillis having announced his retirement and Coons succeeded on the subcommittee by Senator Adam Schiff, the legislative agenda they built continues to define what discussions around patent reform are focused on Capitol Hill and in the broader patent community.

🎙️ Related: Senator Tillis’ Patent Leadership · Senator Coons’ Staffer Phil Warrick

#3 John Squires Director, USPTO

Opponents of the USPTO’s early action on PTAB post-grant proceedings had hoped that Squires’ confirmation would mean a change in direction. Instead, he quickly proved he was going to proceed with full steam ahead along the path laid out by Coke Morgan Stewart and Nick Matich. His most notable early move: taking full personal responsibility for whether to institute IPR and PGR proceedings rather than delegating that decision — a shift that has meaningfully reduced the number of those proceeding. From his first day in office, he has also made Section 101 reform a priority, issuing guidance designed to bring more predictability to patent eligibility — though the USPTO is still in the early stages of implementation.

How lasting any of this proves to be will depend significantly on what happens legislatively, and on Squires’ ability to get the administration behind the legislative action needed to cement his vision for the patent system. His ultimate legacy will also rest in large part on whether he can improve patent examiner morale — reversing a dynamic that produced a record backlog under the last administration. The playbook already exists: David Kappos tackled a similarly daunting backlog by empowering examiners and encouraging collaboration with applicants, a model that reduced pendency and pushed USPTO morale to number one among federal agencies.

🎙️ Related: USPTO Director Squires’ Foxhole Buddy Tells All · Before He Became Director

#2 Coke Morgan Stewart Deputy Director, USPTO

No acting USPTO director has accomplished more in the role than Coke Morgan Stewart. Named Acting Director on the first day of the Trump administration, she used the role to drive significant change at a pace previously unseen from an acting director — who, historically, have minded the store until a permanent director is confirmed. She moved swiftly to recalibrate post-grant proceedings through her “settled expectations” approach, addressing head-on the perception that patents were subject to endless validity challenges. She also steered the agency through the turbulent early months of the new administration — keeping operations intact, refocusing the office on its core mission of examining patents, and doing all of it while inheriting a significant backlog from her predecessor. The first §101 memo of this administration was also issued under her watch as acting director. The foundation that Squires is building on is largely one she laid, and she continues to support it in her role as Deputy Director.

🎙️ Related: Right Choice for USPTO? · USPTO Changes & Patent Trends · Six Months In · Coke Morgan Stewart & Howard Lutnick

#1 Howard Lutnick Secretary of Commerce

Given that Howard Lutnick has credited patents for allowing him to rebuild Cantor Fitzgerald after 9/11 and is a named inventor on over 400 patents himself, Clause 8 expected him to play an outsized role in shaping America’s patent system as Commerce Secretary. So far, he has exceeded those expectations.

His biggest contribution has been giving USPTO’s political appointees the freedom to operate the agency as a genuinely pro-patent institution, arguably the most pro-patent posture the USPTO has taken since at least Bruce Lehman led it in the 1990s. His familiarity with patents has at times raised alarm in the pro-patent community, including by floating ideas regarding a patent value tax, exercising march-in rights, and taking a cut of universities’ “patent profits.” However, he has proved responsive to that feedback and dialed it back — at a Senate hearing, he declared “we will avoid harming innovation by not doing a valuation, or any valuation fee or tax on patents.”

His legacy with regards to shaping the patent system will rest on whether he can help shepherd the proposed PTAB rules package through the administration — and get the administration behind the legislative changes needed to make the current direction permanent.

🎙️ Related: Patents Saving Cantor Fitzgerald After 9/11 · Ex-USPTO Deputy Laura Peter on Proposals to Seize IP

Hyatt is proposing to donate his foundational AI patents to the Pioneering AI Foundation, designed, in his telling, to give the U.S. government a new kind of leverage at the International Trade Commission (ITC) to use in negotiations with foreign countries. The concept aligns with the administration's priorities and arrives at a moment when the administration's biggest leverage tool — tariffs — has just been narrowed by the Supreme Court's February ruling.

When Hyatt was last on Clause 8 in 2019, he told the story of his role pioneering the microprocessor and the substantial licensing program he built without ever going to court. But much of that conversation was about what came next.

In the mid-1990s, amid scrutiny of so-called "submarine patents," the USPTO created what was later revealed as the SAWS program, which flagged applications from Hyatt and fellow independent inventor Jerome Lemelson and, in effect, kept any more of their applications from issuing as patents. Hyatt later won a unanimous Supreme Court decision against the USPTO in 2012 in litigation arising from that long-running dispute. But that did not lead to any broader resolution. The government kept fighting. More than a decade later, the battle still continues, with another cert petition now pending before the Supreme Court.

None of that makes Hyatt an obvious candidate to be offering the U.S. government anything, let alone a gift.

And yet that is exactly how he frames it: a gift to America, timed to the country’s 250th birthday. On the episode, Hyatt says the administration has “been considering our project for over a year now,” though he is still waiting to see whether it will move forward. As he tells it, the decision is now theirs.

A Strategic Tool

Hyatt explains that the foundation’s mission is to use intellectual property to “level the playing field” for American workers and American interests. Beyond providing leverage in negotiations, he describes a model in which market access could be conditioned on whether foreign manufacturers meet American standards for labor, human rights, and environmental protections — in other words, whether they are willing to play by rules comparable to those imposed on American companies.

Why Give It Away?

Asked why he would hand this to the same government that spent decades blocking his patents, Hyatt doesn’t hesitate:

“America is the dream of immigrants. My parents were legal immigrants. They came over legally, over 100 years ago. And America gave us the dream life… I want to repay America.”

Can this administration finally get it done?

The offer is on the table. It aligns with the administration’s priorities just as its biggest leverage tool has been constrained.

The question isn't whether this administration will entertain it. By Hyatt's account, they have been — for over a year. The real question is whether a dealmaker reputation is enough to close a deal no other administration has come close to making in thirty years.

Hyatt says he is ready to sign.

Will America accept the gift?

The episode covers:

• 00:23 — the ongoing battle with the USPTO

• 02:44 — the Pioneering AI Foundation

• 05:35 — using the ITC and trade agreements as leverage

• 07:11 — human rights and labor unions: leveling the global playing field

• 10:24 — AI in the classroom: the “super headstart” for children

• 12:35 — relieving drudgery: AI as a catalyst for creative thinking

• 14:27 — addressing skepticism: motives and financials

• 16:16 — repaying the dream: the legacy of immigrant parents

• 17:34 — advice for the next generation of inventors

• 18:22 — final thoughts: destiny and helping America

🎧 Listen to the full episode above or on your favorite podcast app—and subscribe to the Clause 8 YouTube channel for bonus content.

📌 Presented by Tradespace – where ideas take flight.

Disclaimer

That question anchors a new Clause 8 conversation between host Eli Mazour and Professor Kristen Osenga, a University of Richmond law professor and one of the leading academic voices on standard essential patents.

At the center of the discussion is the rise of so-called “royalty-free” technology standards. Osenga’s point is straightforward: “free” often comes with strings attached — particularly for smaller innovators that may be required to cross-license valuable patent rights or accept terms they may later regret.

Her main example is the Alliance for Open Media, the tech consortium behind a “royalty-free” video compression standard. The pitch sounds simple: use the standard without paying royalties. But, as Osenga explains, the real question is what companies may be giving up in return — and whether they fully understand the long-term cost of joining.

She offers a simple analogy: a store gives away free croissants to get customers in the door. Customers build habits around it. Then one day the sign changes. In Osenga’s view, the same risk exists here. Companies can build products and business models around terms that may not remain as favorable as they first appeared.

From there, the discussion broadens into the wider ecosystem of royalty-free standards, cross-licensing organizations, defensive patent pledges, and emerging AI-related IP initiatives. What is driving these arrangements? Collaboration? Public relations? Strategic control? And what, exactly, should companies think through before signing on?

As Osenga puts it: “Follow the money … where are these groups making their money? Because it’s probably coming from some other part of their business model.”

The episode also covers:

• what the pattern of withdrawals from major cross-licensing organizations reveals about how these arrangements play out over time

• SEP policy whiplash across US administrations, the Standard Essential Royalties Act (SERA), and where things stand now

• the EU’s proposed SEP framework, and why it stalled

• the litigation funding debate, including why Osenga founded The Inventors Defense Alliance

• the Tillis-Schiff letter to ANSI, China’s push to shape global standards bodies, and the implications for US innovation leadership

• why Osenga believes the RESTORE Act is critical to preserving US innovation leadership

It is a conversation worth sharing with anyone focused on licensing, standards, or innovation policy.

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🎧 Watch the full episode above or listen on your favorite podcast app—and subscribe to the new Clause 8 YouTube channel for bonus content.

📌 Presented by Tradespace – where ideas take flight.

Disclaimer

Pittman — a serial entrepreneur, inventor, and self-described “foxhole buddy” and “wingman” of Squires — drove up from Georgia to sit down with host Eli Mazour in the Clause 8 studio for this episode, fresh off a meeting with the new director himself. What he shared was a rare inside account of how Squires ended up in the job, what he walked into, and why Pittman believes the USPTO finally has the right person at the helm.

“Andrei went to Trump and said ‘I’ve got your man’”

The short version: it was Pittman who planted the seed.

The moment Trump won, Pittman texted Andrei Iancu — the USPTO director during Trump’s first administration — from a campsite on the trail. Other names were circulating, and he wasn’t a fan of what he was hearing. His answer was John Squires, his own patent attorney. Iancu’s response: Do you think John would do it? Pittman said he’d ask.

When he did, Squires’ first reaction was “Doug, you’ve lost your mind.”

But Pittman kept pushing, and Iancu worked his magic with the new administration. The rest was fate. On the morning of September 11, 2001, Squires walked through the North Tower alongside his friend and neighbor Tommy Cahill, who then headed up the elevators to the 103rd floor Cantor Fitzgerald trading desk. Squires watched Flight 175 hit the South Tower from his Goldman Sachs office and narrowly escaped the debris cloud when the South Tower collapsed. It was the last time he saw Cahill. In the aftermath, as Squires later described in Senate testimony, he filed patents to combat terrorist financing alongside the FBI and Treasury. Lutnick, who lost 658 Cantor Fitzgerald colleagues that day, rebuilt the firm on patents1. The two men's parallel work forged a relationship that would outlast the aftermath of 9/11: when Lutnick became Commerce Secretary, head of the department that includes the USPTO, Squires was the obvious call.

“Andrei went to Trump and said, ‘I’ve got your man.’ Long story short, that’s how John became USPTO nominee.”

In this episode, Doug Pittman discusses:

• Journey from son of a pig farmer to serial entrepreneur, including selling his first tech company during the dot-com boom

• How a billboard spotted on a drive to college with his son inspired the invention that led his first patent, and the years-long journey to get that first patent granted

• Why he cried when the patent arrived — and why tears of joy turned into “tears of unhappiness”

• How Squires led his enforcement strategy and how the twists & turns of that impacted Squires’ view of the patent system

• Litigation funders walking away over Section 101 and PTAB exposure

• The litigation saga, including the experience of having a judge handle a patent case for the first time

• Meeting with former USPTO Director Kathi Vidal and Doug’s unvarnished take on her legacy

• The PTAB problem, the injunctive relief gap, and what needs to happen for independent inventors to feel comfortable with the patent system

• Squires’ upcoming testimony before the House IP committee

• His “1-8-8 Project,” his advice to Squires to “push the limit,” and the personal photo (different from the one above) he sent the director to serve as a daily reminder in his role

🎧 Watch the full episode above or listen on your favorite podcast app—and subscribe to the new Clause 8 YouTube channel for bonus content.

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Disclaimer

That context matters. The previous administration left the USPTO with a record backlog and Section 101 rejection rates that had climbed back to pre-2019 levels — Voice of IP broke that story in June 2024, when 24% of all office actions contained a §101 rejection and the AI art units had hit 77%. The current administration has been working to reverse those trends, issuing new §101 guidance, signaling a more balanced approach to patent eligibility, ramping up the hiring of new examiners, and refocusing the USPTO on its core function of examining patent applications.

For this episode of Clause 8, Eli reached out to Francesca Cruz for her team at Juristat to pull the data together and then invited Clause 8 return guest Clint Mehall to react to the findings in real time.

Who’s actually driving allowances — and why it matters for the backlog

One of the reasons Eli wanted to look at examiner experience data was straightforward: if the administration wants to reduce the backlog, understanding which examiners are positioned to finish examining cases — and under what conditions — is essential.

Some tools that measure examiner behavior use tenure — years at the USPTO — as a proxy for experience. Juristat’s analysis suggests that’s not fully the right metric, and that the number of applications an examiner has actually worked through, at least relative to other examiners in the same art unit or working group, is often a more revealing indicator of their likely approach.

And, as even the USPTO recognizes, primary examiners with full signatory authority operate differently than even “very experienced” examiners who still need supervisor sign-off on allowances.

The findings on how junior, mid-level, and senior examiners actually compare — on office actions, allowance rates, and consistency — are counterintuitive in ways worth digging into. One data point that particularly stood out: it’s often not the newest examiners who tend to produce the longest prosecutions. Clint had a theory for why — invoking the Dunning-Kruger effect — that’s worth hearing in his own words.

The data also highlights something practitioners already sense but rarely see quantified: the variation between individual examiners within the same art unit can be as wide as the variation between entire technology centers. For that reason, examiner-level data is often more useful than art unit averages when thinking about prosecution strategy. Notably, the USPTO's Office of Patent Quality Assurance (OPQA) is now actively working on how to make apples-to-apples comparisons across examiners handling similar technology to identify meaningful deviations. That's a significant development worth watching if the USPTO is able to find a way to address address that variation.

The full breakdown, including how the examiners were classified for the data discussed in this episode will be shared in a dedicated post coming soon.

Interviews after final: what the numbers actually show

The USPTO has recently pointed to data showing that the share of applications receiving at least one interview has grown — from around 30% to roughly 35% since mid-2025. That’s accurate, and interviews are worth doing: Juristat’s data shows allowance rates are roughly 10% points higher for applications where an interview occurred.

Juristat's analysis found that following the recent PAP changes, the number of interviews after final office actions has decreased. However, it's too early to tell whether that remains the case, and if so, what the downstream effects will be.

What happened after the AFCP program ended

When the After Final Consideration Pilot program was discontinued in December 2024, the stated reason was that the cost of the program was too high for the USPTO relative to the benefits. The data confirms that the results of the AFCP program were underwhelming — but discontinuing the program has caused a meaningful shift in examiner and practitioner behavior with potentially negative implications for reducing the backlog.

Allowance rates after final without an RCE have dropped meaningfully since the program ended. At the same time, allowance rates after final with an RCE have edged up. The numbers tell a clear story about how practitioners have adjusted, which Fran and Clint dig into in the episode.

Section 101: early signals, not yet a trend

The August 2025 guidance memo — reinforced when a key PTAB decision became precedential in September — was the clearest signal yet that this administration wants §101 rejection rates to come down. Comprehensive examiner training on the updated guidance is now being planned for rollout later this month, which the USPTO expects will drive more meaningful change in the data over the rest of the year.

The data so far reflects the lag before that training takes effect — overall rates haven’t moved significantly in the aggregate. But there are art-unit-level signals worth watching, particularly in the AI working group, where rejection rates spiked dramatically under the previous administration and have begun to show some movement. Business methods and medical device art units tell a different story, and the episode walks through each of them.

A dedicated Voice of IP post on the §101 data — including art-unit breakdowns and examiner-level outliers — is coming soon.

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Disclaimer

The conversation traces early debates sparked by the DABUS cases, which framed AI inventorship as a question of whether a machine could be named as an inventor. While those cases clarified that U.S. patent law requires a human inventor, they also highlighted a more practical issue that remains unresolved: how to evaluate human contribution when AI tools play a role in the inventive process, including in areas such as industrial design.

The episode also examines the USPTO’s shifting approach to AI-related inventions, from post-Alice uncertainty to more recent Section 101 guidance and new USPTO Director’s John Squires Ex parte Desjardins PTAB decision. Wen discusses how applicants can position AI inventions as genuine technological improvements, avoid overreliance on “black box” disclosures, and manage Section 112 risks.

The discussion concludes with a forward-looking look at using AI tools for patent practice, the USPTO’s new pilot for AI-powered pre-examination search, and what these developments mean for practitioners and innovators navigating a rapidly changing IP landscape.

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Chapters

00:01 – Wen Xie’s early interest in AI and patent law
02:10 – AI disruption before ChatGPT: imaging, medicine, and automation
04:56 – How AI reshaped Wen’s legal career
05:55 – DABUS, Thaler, and the AI inventorship debate
08:56 – Human contribution vs. AI output
10:40 – Should companies restrict inventors from using AI?
11:59 – What in-house counsel should ask about AI use
14:20 – Duty of candor, recordkeeping, and litigation risk
18:06 – Section 101 and AI as technological improvement
22:50 – USPTO guidance, PTAB trends, and examiner behavior
32:01 – Section 112 issues and describing machine learning
33:40 – Using generative AI in patent drafting
39:40 – Advice for junior attorneys in an AI-driven practice

Disclaimer

Under new USPTO leadership, the agency has taken meaningful steps to strengthen patent rights over the last year—from significantly reining in the role of the PTAB in invalidating patents to bringing greater clarity to how Section 101 is applied within the USPTO. But as Peter-Anthony explains, while the steps taken by the agency are promising agency action alone is prone to change and limited to what happens at the USPTO.

That’s where Senator Tillis comes in. Peter-Anthony walks through how PREVAIL and PERA will lock in much of the what the USPTO is doing and provide long-term certainty for innovators. The conversation explores the progress made last Congress, where the sticking points remain, and what it will take for the legislation to finally pass during Senator Tillis final term.

Peter-Anthony is candid about the reality of iterative progress – the coalition building, education, and compromise required - as well as the entrenched interests who have resisted all legislative efforts. At the same time, he describes the slow but meaningful momentum he’s seeing, and why this moment presents an opportunity for the USPTO, Congress, and stakeholders to work together. Before being chosen as USPTO’s acting Director, Coke Morgan Stewart sounded a similar note of optimism about a second Trump administration supporting bi-partisan patent bills.

Peter-Anthony brings a rare vantage point to that assessment. Before coming to Capitol Hill, he served as a frontline Patent Examiner, a Supervisory Patent Examiner, PTAB Branch Chief, and Special Advisor to former USPTO Director Andrei Iancu. He shares the story of following that path and provides insights into how that experience gives him a unique understanding of how patent policy works in practice and what it takes to make meaningful, long-term changes.

The episode also touches on other IP issues at the top of Senator Tillis’ agenda, including copyright and AI, commercial piracy, and performance rights — including Peter-Anthony’s role in planning a recent IP Subcommittee hearing that drew attention for testimony from Gene Simmons.

Eli and Peter-Anthony also discuss their shared North Jersey roots, and how they first met while Peter-Anthony was at the USPTO.

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Disclaimer

That question is at the center of this episode of Clause 8, where host Eli Mazour sat down with Subroto Bose, Head of IP at Astera Labs, at the VIA Licensing Alliance’s 2025 Bridge Summit.

Prior to Astera, Subroto held IP leadership roles at global semiconductor companies and standards-driven licensing environments. That breadth of experience informs a central theme of the conversation: effective IP strategy is ultimately about predicting the future. Patents filed today must remain relevant not only at issuance, but across multiple generations of products and shifting market realities.

Astera Labs operates at the intersection of AI and semiconductors, a highly competitive space where multiple companies are advancing the technology in parallel and IP strategy must complement active—and sometimes unpredictable—product development. Subroto brings a rare perspective to that challenge, shaped by earlier experiences growing semiconductor patent portfolios and dealing with non-practicing entities at Altera and Marvell, as well as buying patent portfolios and participating in patent pools at Dolby Laboratories, before taking on the task of building an IP program from scratch at Astera.

During the discussion, Eli and Subroto explore how early-stage companies should prioritize patent filings under budget constraints, why patent quality matters far more than volume, and how IP leaders can embed patent thinking directly into engineering culture rather than treating it as a separate legal function.

Subroto explains why, in a competitive environment, some IP decisions cannot be deferred without consequences—and how that reality shapes what he chooses to protect and when. He also reflects on what years spent reviewing patents as a buyer taught him about identifying real value, and how that buyer’s lens now influences his current role.

He also shares why he decided to sit at a desk inside the engineering area when he joined Astera Labs, and the impact that had on how he learned about new technology and engaged engineers.

The episode also takes a clear-eyed look at the limits of trade secrets, particularly in industries where disclosure to customers and partners is unavoidable and parallel invention is a real risk. Subroto explains why deciding what belongs in a patent versus what can safely remain confidential is rarely straightforward—and why relying on secrecy alone can leave companies exposed.

Finally, Subroto offers advice for those aspiring to become Heads of IP at high-growth Silicon Valley technology companies, reflecting on his own non-linear path into IP leadership, including early litigation work alongside Kathi Vidal before she became USPTO Director.

The conversation offers practical insight for anyone interested in how to design and implement an IP program built for long-term success in fast-moving technology markets.

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Disclaimer

In this episode, Ceyda and Marcia join Clause 8 host Eli Mazour for a wide-ranging conversation about mentorship, what it really takes to run IP teams inside large technology companies, and what the rise of AI means for both in-house and outside counsel.

They share the story of how they first met at HP, why Ceyda credits Marcia with the advice and encouragement that helped her grow into the Chief IP Counsel role, and what that guidance looks like in practice for other in-house lawyers navigating their own careers.

The conversation also dives into HP’s experience with high-stakes litigation and how those lessons shape its global patent portfolio strategy. Ceyda also offers a behind-the-scenes look at HP’s IP team restructure—why early attempts fell short and what finally made the new model work. The discussion delivers practical takeaways for anyone building or leading an in-house IP team, balancing portfolio development with business goals, or working to make IP more central to company decisions.

The episode closes with a candid, practical discussion of AI—what it means for the expectations placed on outside counsel, how in-house teams are already using it, and what lawyers need to do to continue delivering real value as the pace of work accelerates.

Together, Ceyda and Marcia offer a rare, grounded look at mentorship, leadership, and the future of IP inside major tech companies.

👉 Listen to the full episode—and explore more conversations shaping the future of IP—on the Clause 8 YouTube channel.

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Disclaimer

Dorini described patent pools as “great democratizers of technology,” helping both licensors and implementers navigate increasingly complex standards environments. As regulatory scrutiny intensifies across the U.S., Europe, and Asia, he noted that pools are evolving in response, finding new ways to balance transparency with practical, market-driven licensing solutions.

Brown expanded on this theme from Dolby’s internal perspective. He outlined how Dolby ensures the strength and essentiality of its patent portfolio — through direct participation in standards development, rigorous internal analysis, and independent evaluations. These processes, he explained, are critical not only for maintaining high-quality SEP assets but for building trust across the licensing market.

Both speakers also pointed forward. As Dolby’s technologies extend into areas such as wireless power, EV charging, and other emerging platforms, the role of patent pools is likely to expand. While the fundamental structure of pools may remain consistent, their scope and global influence continue to grow, driven by new implementers, new licensors, and new technological frontiers.

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In the latest episode of Clause 8, the focus turns to how the USPTO’s evolving approach to post-grant proceedings at the PTAB is shaping the broader patent policy debate—and influencing what Congress may (or may not) do next.

The episode features David Jones, Executive Director of the High Tech Inventors Alliance (HTIA) and a longtime Clause 8 favorite, alongside Jeffrey Hantson, a former patent litigator and senior Senate Judiciary Committee staffer who most recently served as Deputy General Counsel to Sen. Dick Durbin after advising Sen. Mazie Hirono on IP issues. Dave and Jeff first crossed paths during the pre-pandemic Section 101 roundtables, and the episode captures their fun, wonky back-and-forth dynamic.

A central theme is whether the USPTO’s recent moves on IPR institution—including its Notice of Proposed Rulemaking (NPRM)—create an opening for Congress to strike a bargain, or instead make legislative compromise harder. Dave and Jeff explore how the introduction of settled expectations, Director John Squires reclaiming institution authority, and broader institution trends are reshaping the conversation around proposals such as the PREVAIL Act.

Jeff frames the core tension in familiar terms for staffers and stakeholders: at some point, should the USPTO be done reassessing a patent’s validity? Dave, for his part, is skeptical that legislation is the answer when the agency is (in his view) drifting from what was envisioned when Congress created the PTAB under the America Invents Act (AIA).

The conversation also explores why PREVAIL advanced further than PERA in the last Congress, why PTAB reform is often easier to grasp on Capitol Hill than Section 101 eligibility, and why Sen. Thom Tillis’ likability—and impending retirement—may matter more than most people realize.

Set against a backdrop of shifting IP leadership on Capitol Hill and mixed administrative signals on patents, the episode offers a candid look at where patent policy may be headed—and what it would take to change course.

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From the archives:

• Iancu and Jones Debate Section 101: https://www.voiceofip.com/p/iancu-and-jones-debate-section-101

• HTIA’s David Jones on Winning in DC: https://www.voiceofip.com/p/htias-david-jones-on-winning-in-dc-335

• 
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Disclaimer

As Global Head of IP at Novartis, Salsberg has a unique vantage point on how legal uncertainty affects the future of healthcare innovations. His work testifying before Congress has placed him at the center of the debate over the Supreme Court’s Mayo, Myriad, and Alice decisions — rulings that he thinks have been followed by years of instability around Section 101, threatening investment in critical biotech and diagnostic breakthroughs.

The conversation explores the political landscape surrounding the Patent Eligibility Restoration Act (PERA), the persistence of myths like “patent thickets,” and the consequences of letting misinformation shape innovation policy. It also highlights what Congress can do to prevent the U.S. from falling behind in the race for gene and AI-driven therapeutics.

Ultimately, Salsberg’s perspective underscores how constructive, good-faith dialogue across industries remains essential to safeguarding innovation.

🎧 Listen to the full episode now on the Clause 8 Podcast.

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Disclaimer

Their conversation traces the evolution of patent pools — from the early days of MPEG LA and antitrust uncertainty to today’s complex, global licensing ecosystem.

Garrard Beeney recalls how early skepticism toward joint licensing eventually gave way to an appreciation of how collaboration between innovators can expand access, reduce friction, and drive technological growth. He warns, however, that increasing regulatory interference — particularly in Europe — risks undermining a system that largely works.

John Sideris brings the perspective of a major technology innovator. He discusses how Philips built a licensing culture that values both innovation and fairness, explaining why patent pools remain one of the most efficient and balanced ways to manage IP rights. He also shares a rare insider view into how companies factor intellectual property costs into product development — and why responsible licensing keeps the innovation cycle healthy.

Together, their insights offer a window into how markets, not mandates, can sustain innovation — and why listening across the licensor-licensee divide remains essential for the future of IP.

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🖋️ Subscribe to Voice of IP for more in-depth conversations on patents, licensing, and innovation.

The announcement sparked questions and concerns about what the changes — including new interview time limits, a new streamlined review process, and increased production expectations - will mean in practice.

In this Clause 8 episode, Eli Mazour speaks with Jerry Lorengo, a Deputy Commissioner for Patents who helped lead the process for figuring out and implementing the changes over the last six months. Jerry joined the USPTO as an examiner in 1996, became an SPE nine years later, and has since held multiple senior leadership roles.

In this episode, Jerry:

• Walks through the process that led to the changes

• Discusses the impact of new production expectations on examiners

• Breaks news that the new streamlined review process — originally announced to focus on “all independent claims and any dependent claims indicated as allowable” — has now been changed to focus on all independent claims (rejected and allowed)

• Contrasts the new streamlined review framework - designed to front-load quality review to expedite and improve examination across the art unit - with the reviled “second pair of eyes” review program that undid allowances after extensive examination

• Explains why it’s not appropriate for SPEs to tell examiners to “keep looking” for prior art

• Clarifies that despite new interview policy, examiners and SPEs are expected to continue to facilitate applicant-initiated interviews to advance prosecution

• Shares practical advice for succeeding at the USPTO — from both the examiner’s and applicant’s perspectives

• Discusses how the USPTO plans to monitor and adjust the policies based on data and feedback from applicants, practitioners, examiners, and SPEs

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Lisa’s path into inventing began after her family moved to Brooklyn, New York, where her creativity and curiosity found room to grow. She started inventing at a young age, driven by the simple desire to solve everyday problems. That curiosity evolved into a lifelong passion for turning ideas into reality. Her first major success—the Bosom Buddy breastfeeding cape—opened doors to retail shelves, QVC appearances, and a deep understanding of what it truly takes to bring a product to market.

In our conversation, Lisa and I talk about what inventors often learn the hard way: that success requires persistence, self-belief, and an understanding of both patents and business. She shares how she built Inventing from A to Z, a company that helps independent inventors navigate everything from concept to commercialization, and why she tells every creator:

“A patent doesn’t sell your product—you do.”

Lisa also offers insights for patent attorneys—encouraging them to ask inventors where they see their product being sold before diving into legal protection. Her perspective bridges the gap between invention and entrepreneurship, showing how passion and practicality go hand in hand.

For anyone ready to turn ideas into impact, Lisa’s story is both inspiring and instructive. Her new book, “The Inventress’s Guide to Inventing The Right Way: All Or Nothing, Now Or Never”, is an essential companion for creators determined to make their vision real.

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Fifteen years ago, then–USPTO Director David Kappos overcame a record backlog by adjusting the PAP to incentivize collaboration between examiners and applicants.

Now, facing an even larger backlog than the one Kappos inherited, the USPTO appears poised to take a very different path. Less than two weeks after Director John Squires was sworn in, the agency internally announced proposed PAP revisions that appear likely to further reduce collaboration with applicants and deepen examiner frustration - the same dynamics that contributed to the current backlog. The emphasis on increased production also risks reinforcing perceptions that is being prioritized over “patent quality.”

Early Positive Steps

Back to Basics: at the start of this administration, the USPTO laudably refocused on core operations to address the growing backlog of patent applications.

Patent Eligibility

In Voice of IP’s August update, we noted that the August 4 memo on §101 was a promising start — and predicted that additional eligibility changes would follow once John Squires was confirmed as director.

That’s exactly what happened. Since taking office, Squires has taken several early — mostly symbolic — steps signaling a more balanced approach to eligibility that allows examiners to focus most of their efforts on prior art rejections, including:

• Issuing first two patents in technology areas that often face §101 scrutiny — one in distributed ledger/crypto and another in medical diagnostics.

• Vacating a PTAB panel’s new grounds of rejection under §101 for claims involving improvements in training machine-learning models.

But…

Before the USPTO could ensure that examiners were consistently applying this shift in approach to patent eligibility, the agency announced proposed PAP revisions that risk undermining the benefits of those earlier steps in reducing the backlog.

Historical Perspective: Last Record Backlog

By the numbers

Between 2002-2007, the backlog of unexamined patent applications grew by 73%. at the USPTO. By October 2007, the Washington Post reported that

If the [USPTO] could shut down its doors to catch up on its work, its 5000 patent examiners would take at least two years to clear the backlog of pending applications, there would more than 1 million new applications piled up on the doorstop.

Mindset

At the time, the USPTO leadership blamed the backlog on “worse and worse quality applications.” The Intellectual Property Owners (IPO) Association and others pushed back, questioning the USPTO’s underlying assertions and suggesting that the real problem was overly restrictive examination practices that drove allowance rates down.

Dudas Rules

That pushback did not deter then-USPTO Director John Dudas from issuing a sweeping set of rules to limit the number of claims, Requests for Continued Examination (RCEs), and continuation applications to address “the crippling backlog unexamined applications.” Those rules were ultimately enjoined but the backlog remained and, to many, appeared insurmountable when David Kappos was confirmed as director in August 2009.

Even after rescinding the Dudas rules, many in the patent community believed that drastic limits on applicant options was the only viable path to reducing the backlog — a belief Kappos would quickly disprove.

David Kappos’ Proven Gameplan

When Kappos became director, the backlog was at 1.2 million applications, and average pendency was 35 months. Within four years, both metrics improved sharply — even as application filings increased by 24%.

Approach

As Kappos later explained on Clause 8, the turnaround was due to a focus on improving the USPTO’s culture. Although encouraging examiner interviews became the most visible change, he emphasized taking many small steps to empower examiners to do what they thought was right, including allowing applications when appropriate. One of his first moves was to actually increase the initial time examiners had to review applications.

PAP Revisions

A USPTO press release from the time noted that management was “working with representatives of the patent examiners union, the Patent Office Professional Association (POPA), to better align the performance standards for patent examiners with the USPTO’s goals for increasing quality in patent examination and reducing the backlog of pending patent applications,” and that the discussed “changes would be the first major revision to the patent examiners’ performance appraisal plan (PAP) since 1986.”

Proposed changes included:

• Establishing a “Stakeholder Interaction” element that emphasizes routine use of interviews to facilitate compact prosecution and timely responsiveness to requests for personal interviews;

  …

• Revamping the workflow element to provide examiners more opportunities to use their professional discretion to manage their own workflow.

Results

During his Clause 8 interview, Kappos noted that the USPTO rose from among the lowest ranked agencies for morale and engagement to being ranked number one out of over 200. The turnaround was later profiled in Tailspin as a rare example of successful government reform.

Current Backlog of Total Pending Applications Ticks Up

Unexamined Applications Backlog Declines

At a late-September USPTO Hour webinar, Acting Commissioner for Patents Valencia Martin Wallace said that at the beginning of the year the office had over 837,000 applications awaiting examination but now has fewer than 794,000.

Official Line

According to Law 360’s Ryan Davis, Martin-Wallace suggested that the USPTO was already on track in dealing with the backlog problem, emphasizing that the USPTO’s focus was on “making sure that our employees are receiving what they need, not only to do the job but to be comfortable and enjoy their time here at the USPTO.”

If the USPTO was already heading in the right direction, it raises questions about why such significant PAP changes are being pursued now.

But Total Pending Applications Backlog is Rising…

In August, Voice of IP highlighted a growing concern that efforts to reduce the unexamined backlog might be masking a rise in the backlog of total pending applications.

Contributing factors:

the end of the AFCP program (under the last administration) + higher production demands (currently) has led to examiners allowing fewer cases after final . . . [and] reinforced the approach of pushing for RCEs, even in cases that are clearly on track to be allowed.

We noted that

without empowering and encouraging examiners to work more collaboratively with applicants, the headline backlog reductions risk being statistical optics.

The latest numbers unfortunately indicate that concern was warranted: the overall backlog of total pending applications has actually modestly increased from 1,242,664 in June 2025 to 1,247,357 in September 2025.

Continued increase explains push

This increase likely helps explain the push for the new PAP changes. However, the proposed revisions appear to double down on the same production-driven approach that has so far failed to reduce the total backlog.

Proposed PAP Changes

Status

The USPTO has informed examiners that the new PAP has not yet been finalized and is not expected to take effect until next month.

Flood of Interview Denials

However, examiners are already routinely relying on the proposed changes to deny interviews after final office actions. During one of the internal sessions explaining the changes, a Deputy Commissioner for Patents stated that examiners should still grant interview requests that exceed the new compensated limit. Not doing so, he said, could count against their stakeholder interaction scores under the revised PAP — a point that has only added to examiner dismay.

Rollout Concerns

The internal announcement of the proposed PAP came without any written guidance. Examiners, practitioners, and applicants have all expressed uncertainty about what the new expectations will mean in practice.

The USPTO plans to use a USPTO Hour webinar this week - now titled “USPTO Hour: Understanding a patent examiner’s role in the IP community” - to roll out the changes to the public.

Proposed PAP Changes

The following proposed changes have garnered particular concerns from examiners:

1. Interview restrictions

• Caps compensation at one hour of interview time per round of prosecution unless additional time is approved by a supervisor.

• Likely to discourage applicant-initiated interviews since additional discussions could go uncompensated or require extra supervisory approval.

• May also disincentivize examiner-initiated interviews that could otherwise resolve issues before allowance.

2. Additional supervisory review

• USPTO (seemingly as part of changes to the supervisory examiner’s PAP) is reportedly considering requiring both first Office Actions and allowances from all examiners — including primaries — to undergo supervisor review.

• Supervisors already play a significant role in determining allowance rates for junior examiners. Extending that review to primaries could further reduce examiner autonomy and incentivize avoiding allowances to limit review risk.

3. Higher production requirements

• Production goals would reportedly increase by more than 100 hours per year.

• One 15-year examiner wrote on Reddit: “I am so disappointed that this is the first time in my career where I feel like I HAVE to reduce my quality in order to meet expectations.”

• Examiners say the change will reduce their flexibility to collaborate with applicants or assist colleagues.

4. Reduced time for PPH cases

• The proposed plan cuts the time allotted for Patent Prosecution Highway (PPH) cases by 25%.

• While PPH cases historically have slightly higher allowance rates, that’s likely because US claims need to be amended to match those allowed abroad.

• Some worry the change implicitly encourages deference to foreign examination outcomes rather than independent review.

Overall

The proposed PAP changes add pressure on examiners while discouraging them from devoting additional time to working with applicants to reach what they believe is the right outcome in the most efficient way possible. The result risks prioritizing production metrics over examination quality and examiner discretion.

Unexpected Internal PAP Rollout Raises Examiner Concerns

Historically, changes to the PAP have followed extensive consultation with POPA, the union representing USPTO patent examiners. The process was often time-consuming for leadership, but it helped ensure buy-in from examiners who felt their perspective was heard.

Examiners Assured after “Disbanding” POPA

When the USPTO announced executive orders disbanding POPA in early September, management assured employees the move would “not affect any employee’s ... work hours, award programs, or the like.” In his swearing-in remarks on September 22, new Director John Squires emphasized support for examiners’ “vital work” and encouraged them to “Tell. Me. What. You. Think.”

October Surprise

Ten days later, a Deputy Commissioner for Patents announced seemingly sweeping, unexpected PAP changes. Examiners — fresh from navigating the barrage of guidelines during the last administration and RIF and RTO concerns during this administration — were caught off guard.

Examiner reaction

The r/patentexaminer subreddit and private chats quickly filled with concerns about the proposals’ impact. While the subreddit doesn’t always reflect the full examiner community, the tone of the reactions closely mirrors the broader mood inside the agency from what Voice of IP has heard.

• One examiner told Voice of IP, “No one is happy at the USPTO.”

• Another veteran examiner recalled, “I remember examiners sticking around until they were 80 because they loved the job. Now everyone can’t wait to retire.”

Impact

The rollout marked a sharp shift from prior practice — replacing a collaborative process with a top-down announcement at a moment of already relatively low morale. The examiners’ reactions suggests that the proposed PAP could worsen the backlog by increasing attrition and further weakening morale among remaining examiners.

Path Forward for Squires

Where it stands
The new PAP has not yet been finalized. That leaves time for revisions — and for leadership to reconsider whether the proposed framework aligns with the agency’s long-term goals.

The precedent
When David Kappos faced a similar backlog in 2009, he worked with the examiners’ union to revise the PAP around examiner engagement, professional judgment, and communication with applicants. The result was measurable improvement in both backlog reduction and employee morale — achieved without new restrictions for applicants.

What’s next for Squires
Director Squires could take a similar approach. Rather than tightening production requirements and oversight, he could adapt Kappos’ proven framework — focusing on empowering examiners and encouraging collaboration with applicants.

Bottom line
There’s still time to change direction. A single call to Kappos might be all it takes for Squires to avoid repeating past mistakes and steer the USPTO toward a strategy that has already been shown to work.

Path Forward for Practitioners and Applicants

What to expect

Until the new PAP is finalized, practitioners should expect uncertainty in examiner behavior — particularly around interviews. As noted above, some examiners are already applying parts of the proposed framework in anticipation of it taking effect.

Approach

Regardless of the final outcome, practitioners should remain mindful of the pressures examiners are facing while finding ways to align with the USPTO’s stated goal of reducing the backlog. Demonstrating that collaboration and flexibility lead to efficient, high-quality outcomes will continue to be the most effective strategy for both sides.

• Jane Bu, Chief Licensing Officer at Via LA, the world’s largest patent pool. (You can listen to Eli’s previous conversation with Via’s President, Heath Hoglund, here).
  

• Rob Tobias, CEO & President of HDMI LA, the organization formed by Hitachi, Matsushita, Maxell, Philips, Silicon Image, Sony, Thomson and Toshiba to manage and promote the now ubiquitous HDMI interface.
  

In this episode, the discussion turns to the difficulties of licensing in Asia — not as an abstract policy topic, but as a practical reality shaped by culture, relationships, and business expectations.

Jane Bu reflects on how negotiations in Asian markets often rely less on formal processes and more on mutual trust built through repeated, in-person engagement. She also discusses China’s transformation from a latecomer in IP to one of the most active and sophisticated licensing environments in the world — and why patience and long-term relationship-building remain essential for licensors and licensees alike.

From a different perspective, Rob Tobias explains how HDMI’s licensing framework relies on more than patents alone. He outlines how trademarks and brand protection have played a central role in ensuring compliance, maintaining quality, and driving global adoption of the HDMI standard — including in complex markets such as China and India.

Together, their insights highlight how successful licensing in Asia depends as much on understanding people and context as it does on legal or technical structures.

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