Imagine That IP Law Blog

Prior art searching is an important, but very time-consuming, part of the patent process. An applicant may optionally choose to run its own prior art search prior to filing an application. However, the United States Patent and Trademark Office (USPTO) will conduct its search later, during substantive examination. The result is that truly relevant art may surfaces only months or years have passed, when claim scope is already in motion and prosecution strategy is underway.

To help address this timing gap, the USPTO launched the Artificial Intelligence Search Automated Pilot ... Read More ›

For companies seeking patent protection in Germany, timing can be critical. An applicant may want rights in place quickly to strengthen its position against competitors, support licensing or investment discussions, or prepare for possible enforcement. But the fastest route is not always the same as the strongest or broadest form of protection. In Germany, applicants can choose among several options that balance speed, cost, and claim scope in different ways. In many cases, the most effective strategy is to combine short-term protection with a longer-term examined patent ... Read More ›

Standards do not just happen. They are built line-by-line and meeting-by-meeting through the efforts of many stakeholders including engineers, researchers, and companies that show up and do the work required to develop a standard. In many industries, including wireless and cellular communications, standards development can shape entire markets. It influences interoperability, device and network roadmaps, certification expectations, and the technical direction of the ecosystem.

The challenge is that meaningful participation in standards development organizations ... Read More ›

Subject Matter Eligibility Declarations (“SMEDs”) are declarations submitted under 37 C.F.R. § 1.132 to place factual evidence into the record when responding to a § 101 subject matter eligibility rejection.  On December 4, 2025, the USPTO Director issued a memorandum highlighting SMEDs as a tool for eligibility disputes, particularly where the analysis may turn on technical facts like the state of the art, how a person of ordinary skill in the art would read the specification, or whether the claims reflect a technological improvement. The memorandum does not change § 101 ... Read More ›

Broadest Reasonable Interpretation (BRI), as applied during USPTO examination, is often described as a “broad” claim construction standard. That description is accurate as far as it goes, but it is incomplete in a way that routinely drives avoidable disputes in prosecution. The controlling point is the one many applicants quote back to the Office: “The broadest reasonable interpretation does not mean the broadest possible interpretation.” MPEP § 2111. The difference between “reasonable” and “possible” is where the Person Of Ordinary Skill in Art (POSITA ... Read More ›

Introduction: The Paradox of “Free” Software

Open-source software (OSS) is the paradoxical infrastructure of the modern economy. It is frequently “free” in price, yet indispensable in value. Cloud computing, container orchestration, continuous integration pipelines, and AI development environments are routinely built on OSS stacks such as Kubernetes and Docker. The economic consequence is straightforward. OSS compresses development timelines, reduces vendor lock-in, and enables companies to scale products without recreating foundational tooling. That ... Read More ›

For many U.S. companies, a global patent strategy has traditionally focused on a familiar and possible short list of jurisdictions, including, for example, the United States, Europe, China, Japan, and South Korea. As a jurisdiction for seeking patent protection, India sometimes fell into the “nice to have” category, where companies would file if the budget allowed, or revisit it later if the business grew. As outlined below, companies need to start rethinking this strategy, as an Indian patent can be a viable and necessary part of the intellectual property (IP) portfolio.Read More ›

The U.S. Copyright Office has implemented a significant procedural change that will benefit visual artists of all kinds.  Effective as of February 17, 2026, the Office now offers a new Group Registration for Two-Dimensional Artwork (GR2D) filing option, allowing multiple published two-dimensional artworks to be registered with a single application and filing fee.

Under the new rule, applicants may register up to 20 published two-dimensional works in a single group application. Each work covered by a GR2D application is treated as a separate work of authorship, even though the ... Read More ›

The terrain of inter partes review (IPR) strategy shifted meaningfully on November 17, 2025. On that date, the USPTO issued a memorandum authorizing voluntary Search Disclosure Declarations (SDDs), positioning them as a pro‑institution factor in IPR and PGR practice. At first glance, the SDD looks like a one‑way ratchet in petitioners’ favor: disclose your search methodology, strengthen your story of Office error, and improve your institutional odds. But once Ironburg Inventions Ltd. v. Valve Corp. is layered on top of the new guidance, the calculus becomes more ... Read More ›

In an Inter Partes Review (IPR), Petitioners have long been told to avoid relying on prior art the examiner already “considered,” for fear of triggering a discretionary denial under 35 U.S.C. § 325(d). Early PTAB decisions like Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 (P.T.A.B. Dec. 15, 2017) (precedential as to § III.C.5, first paragraph), and Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 (P.T.A.B. Feb. 13, 2020) (precedential), reinforced that message.

Similarly, PUMA North America, Inc. v. NIKE ... Read More ›