Imagine That IP Law Blog

Artificial Intelligence (AI) tools, especially large language models, are transforming many aspects of legal work, including contract drafting. They can generate polished-looking text in seconds and even assist in assembling certain legal documents. But when it comes to complex, highly technical, or high-stakes contracts, particularly those involving intellectual property (IP), relying solely on AI is not just risky, it can have sweeping legal and financial consequences.

Here’s why skilled attorney review remains essential:

IP and Patent Agreements Involve ... Read More ›

A client of ours received a suspicious letter just one week after filing a USPTO trademark application. The sender listing an address in Bluffton–Hilton Head, South Carolina offered a “publication” of the trademark for $1,450. In reality, you do not need to pay any third party to “publish” your mark, and paying won’t speed anything up. The value of that so-called “publication” is $0—it provides no legal rights, no procedural benefit at the USPTO, and no impact on your application.

Fraudulent or misleading solicitations are a longstanding issue for trademark ... Read More ›

The U.S. Patent and Trademark Office's (USPTO) Prioritized Patent Examination Program, known as the Track-1 Program, provides an accelerated patent application examination in exchange for additional filing fees to those required for regular filings. But how does an applicant determine whether and when to use the Track-1 Program for a patent application? The answer may relate to an applicant’s business needs, as well as whether Track-1 limit has been exhausted for a particular year.

A regular patent application averages two (2) to four (4) years from the time of filing to ... Read More ›

What’s in a name? For Philadelphians (and young men of a particular era) “Wing Bowl” conjures up zany images from the 1993-2018 annual early morning chicken wing eating competition including scantily clad women, radio theatrics and trying to get into a sports arena at the crack of dawn, all wrapped up in a uniquely local brand of Philadelphia pre-Super Bowl sports chaos.

After seven years, Wing Bowl is reportedly back in the news.  But when you look a little closer, it’s clear this is not quite the Wing Bowl of old. The event is being licensed, but not revived in the same way. It will ... Read More ›

Like other areas of law, intellectual property (IP) is often depicted as part of a plot point in popular culture, such as movies and television. In addition, lP is often mentioned in the mass media, particularly when any “high-tech” news is of interest. However, unlike some other areas of law, popular culture often gets IP wrong. And in some cases, very wrong.

This article explores how popular culture handles IP, often gets it wrong, and sometimes gets it right.

The “IP Mix-Up”
One of the most common ways that popular culture makes mistakes when discussing IP is by confusing the ... Read More ›

When Acting USPTO Director Coke Morgan Stewart denied institution in Dabico v. AXA Power IPR2025-00408  Paper 21, much of the commentary focused on the result. But the more consequential development lies in her reasoning. The Director grounded her decision on the patent owner’s “settled expectations,” emphasizing that the challenged patent had been in force for nearly eight years. According to Stewart, upending the rights vested during that period would be inequitable and an inefficient use of the Office’s resources. In her words, “actual notice of a patent or of ... Read More ›

Patent attorneys are well-versed in the function of the Information Disclosure Statement (IDS) during prosecution. We understand that listing prior art in an IDS satisfies the duty of candor, helps insulate patents from future invalidity attacks by establishing that the art was “considered” by the USPTO, and protects against charges of inequitable conduct when material references are disclosed in good faith. However, a recent decision by the USPTO Director in iRhythm v. Welch Allyn IPR2025-00363, Paper 10 revealed that IDSs can also be a powerful tool even after the patent is ... Read More ›

The recent precedential Federal Circuit decision on March 24, 2025 in In re Riggs, Case No. 2022-1945 (Fed. Cir. Mar. 24, 2025) is a reminder to patent practitioners and examiners, alike, of the importance of provisional support for subsequently filed applications that claim priority to the provisional.   

Essentially, the Riggs decision aligns with the MPEP with respect to whether an Examiner’s reliance upon the provisional priority date of a published U.S. application can provide the basis for a prior art rejection. The MPEP provides that “[t]he provisional application must ... Read More ›

The emergence of generative artificial intelligence (AI) has brought about a transformative shift in how technical knowledge is created, analyzed, and applied across a broad spectrum of fields. At the forefront of this transformation are large language models like ChatGPT, which demonstrate a remarkable ability to process and synthesize complex technical information. Trained on extensive corpora of scientific literature, patents, and engineering documentation, these systems attempt to replicate human-like understanding and suggest novel combinations and insights ... Read More ›

Determining whether a claimed invention is obvious under 35 U.S.C. § 103 often depends on whether the prior art provides a clear motivation for modifying existing knowledge. Central to this analysis is the concept of a “result-effective variable”—a parameter recognized in the prior art as influencing a particular property or outcome. If a variable is deemed result-effective, it suggests that a person of ordinary skill in the art (POSITA) would have been motivated to adjust or optimize that parameter in pursuit of improved results. However, if the prior art does not establish ... Read More ›