Imagine That IP Law Blog

In most commercially significant inventions, strategic filing of various types of “child” patent applications (patent applications extending from an original or “parent” patent application) in various worldwide jurisdictions is useful in capturing the full value of an original invention. The types of child applications include continuation, continuation-in-part, and divisional applications. The following notable distinctions are worth considering before filing a child application in any jurisdiction.

The first distinction is between continuation and ... Read More ›

Introduction
The person of ordinary skill in the art is central to many patent-law inquiries, but not in the same way across the Patent Act. Section 103 expressly asks whether the claimed invention would have been obvious to a POSITA. Section 112 often turns on what the skilled artisan would have understood from the disclosure. Claim construction likewise depends on how claim language would be understood in view of the intrinsic record. Section 101 is different. Unlike § 103, § 101 does not ask what would have been obvious to a POSITA. The POSITA enters eligibility indirectly, through ... Read More ›

Introduction
The recent debate over artificial intelligence and inventorship has often focused on a single question: can an AI system such as ChatGPT, DABUS, or another generative model be named as an inventor on a United States patent application? The Federal Circuit answered that question in Thaler v. Vidal, holding that the Patent Act limits inventorship to natural persons. Thaler v. Vidal, 43 F.4th 1207, 1211-13 (Fed. Cir. 2022). Yet the next wave of disputes is unlikely to end with Thaler. Parties will continue to argue that AI systems do more than merely assist human inventors ... Read More ›

More than decade after the Supreme Court’s landmark decision in Alice Corp. v. CLS Bank International, 573 U.S. 208 (2014), the question of what makes a software invention patent-eligible under 35 U.S.C. § 101 remains one of the most unsettled areas of U.S. patent law. The Alice framework, which built on the earlier Supreme Court ruling in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012), purported to prevent monopolization of “abstract ideas” through generic computer implementation. However, that decision has since spawned a complex and ... Read More ›

Attorney-client privilege is a longstanding and foundational legal doctrine. This privilege is meant to promote open communication between attorneys and their clients. Therefore, it not only protects the legal advice given by an attorney, but also the information from a client. This open communication enables attorneys to give informed and sound legal advice. Upjohn Co. v. United States, 449 U.S. 383, 390 (1981). For a communication to be protected by the attorney-client privilege, it needs to be confidential, it must be between the attorney and the client, and it must be for the ... Read More ›

Artificial intelligence (AI) is rapidly advancing its presence in the arts, creating what many consider a "Napster moment" for the entertainment industry. For the past few years, the vocal likenesses of public figures and artists have been used to generate highly realistic synthetic audio. This technological shift places immense power in the hands of everyday users, challenging our traditional understanding of originality and raising a pressing question for artists and citizens alike: Can AI legally copy my voice?

While the technology exists to replicate your voice with ... Read More ›

Startups entering defense-adjacent markets face a different environment from traditional Government contracting. Many technologies that have application in defense contexts are created or refined in commercial markets while later being adapted for military use. Artificial intelligence, drones, and Low-Earth Orbit (LEO) satellite constellations are just a few examples. The Department of Defense (DoD) is betting heavily on this model. Recent Defense awards to Anthropic, Google, OpenAI, and xAI to accelerate AI adoption across national security missions reflect a broader ... Read More ›

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 ›