Imagine That IP Law Blog

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 ›

The landscape of design protection has seen significant developments on both sides of the Atlantic, with the U.S. undergoing a pivotal shift in design patent law following the Federal Circuit’s decision in LKQ Corporation v. GM Global Technology Operations LLC, No. 2021-2348 (Fed. Cir. May 21, 2024), while the European Union continues to operate under the established framework for Community Registered Designs (CRDs). Both systems aim to protect the aesthetic aspects of industrial designs, but their approaches diverge significantly in terms of standards for protection ... Read More ›

The concept of the "person of ordinary skill in the art" (POSITA) remains pivotal in patent law, particularly in evaluating obviousness under 35 U.S.C. § 103 and compliance with enablement and written description requirements under 35 U.S.C. § 112. Traditionally, the POSITA is defined by their technical competence and ordinary creativity, enabling them to recognize and combine known methods to achieve predictable outcomes. However, with advances in generative AI such as ChatGPT, a new question arises: could such AI fulfill the role of the POSITA, including providing a benchmark ... Read More ›

The United States Patent and Trademark Office (USPTO) today announced that the After Final Consideration Pilot Program 2.0 (AFCP 2.0) will be allowed to expire. Originally launched in 2013 to facilitate better interaction between patent applicants and examiners after a final rejection, AFCP 2.0 provided a framework for further consideration of claims without the need for expensive and time-consuming appeals or Requests for Continued Examination (RCEs). The program's expiration marks the end of a decade-long pilot, but the USPTO has extended the deadline for final requests ... Read More ›

Patent eligibility in the United States is governed by 35 U.S.C. § 101, which requires that an invention must fit within the categories of a process, machine, manufacture, or composition of matter. However, even if an invention falls into one of these categories, it may still be ineligible for patent protection due to judicial exceptions that exclude laws of nature, natural phenomena, and abstract ideas. A common issue arises when patents claim a desired result without providing the specific method or process for achieving that result. In this blog post, we explore the legal ... Read More ›

Congratulations! You are ready to file a United States (U.S.) non-provisional patent application for your invention. This is a major milestone for any startup. But what comes next? Is it just a waiting game? Well ... maybe not.

A challenge with the standard patent process is that U.S. non-provisional patent applications are subject to the overburdened queues of the U.S. Patent and Trademark Office (USPTO). USPTO statistics for an application show that the Traditional Total Pendency is 26.1 months to 42.9 months. (See Pendency Statistics USPTO from July of 2024). This means that ... Read More ›