Author: Tim Bianchi
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Preexamination IV: Using AI to Pressure-Test Inventions for Patent-Worthiness
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in AI assisted patent analysis, AI assisted Patent Generation, Artificial Intelligence and Patents, Artificial Intelligence for Examination of Patent Applications, Artificial Intelligence for Patents, claim challenges, Patent generation to avoid validity challenges, Patent Portfolio Management, Preexamination, prior artSeries note. This is the fourth post in the Preexamination series, following Part I,Part II, and Part III. From valid to worth owning The first three installments used AI to pressure-test claims against the prior art so that what gets filed is more likely to survive examination and challenge. Validity is necessary. It is not…
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Preexamination III: Conception, Inventorship, and the Limits of Landscape
Series note. This is the third post in the Preexamination series. Start with Preexamination: Seeing the Art Before the Office Does and Preexamination II: Landscape For Drafting Invention requires conception U.S. inventorship requires invention and invention requires conception. The USPTO’s revised inventorship guidance states the governing standard in the Federal Circuit’s terms and quotes them…
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Preexamination II: Landscape For Drafting
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in AI assisted patent analysis, AI assisted Patent Generation, Artificial Intelligence and Patents, Artificial Intelligence for Patents, Ex Parte Prosecution, Large Language Model (LLM), Machine Learning (ML), Patent generation to avoid validity challenges, Patent Portfolio Management, Preexamination, PTAB, PTAB Patent TrialsSeries note. This is the second post in the Preexamination series. The first was Preexamination: Seeing the Art Before the Office Does Part I argued that the introduction of AI is not simply better search. It is the ability to read a body of art, reason about what it teaches, and adapt the application while…
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Preexamination: Seeing the Art Before the Office Does
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in AI assisted patent analysis, AI assisted Patent Generation, America Invents Act, Artificial Intelligence and Patents, Artificial Intelligence for Examination of Patent Applications, Artificial Intelligence for Patents, claim amendments, claim challenges, Examination Automation, inter partes review, IPR, Large Language Model (LLM), Machine Learning (ML), Patent generation to avoid validity challenges, Patent Portfolio Management, Post Grant Review, Preexamination, prior art, PTAB Patent Trials, reexamination generally, Synthetic ExaminationFor as long as people have recorded what they know, two capabilities have raced each other: the rate at which we generate information, and the ability to find and make sense of what we already have. Neither has held the lead for long. Every leap in one exposes the inadequacy of the other. The field…
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Institution Discretion and the 2026 AIA Docket
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in America Invents Act, Ex Parte Prosecution, Federal Circuit Review of PTAB Proceedings, Future of PTAB Trial Practice, inter partes review, Litigation, Mandamus Actions in the Federal Circuit, Patent Portfolio Management, petitions practice, Post Grant Review, Prosecution Guidelines, PTAB, PTAB Patent Trials, PTO Director Review of AIA Trials, reexamination generally, serial petitionsSept. 2, 2026 Last September, after John Squires was confirmed as Director, I wrote that we would see whether the then-emerging line of discretionary dismissals of IPR petitions “is to be extended or will itself be tempered.” The Federal Circuit answered the reviewability half on November 6. The 2026 filing and institution numbers supply the…
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Federal Circuit Denies Mandamus in Three IPR Institution Challenges: Deference to PTAB Discretion
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in Amended Rulemaking, America Invents Act, claim challenges, Federal Circuit, Federal Circuit Review of PTAB Proceedings, Future of PTAB Trial Practice, IPR, Litigation, Mandamus Actions in the Federal Circuit, Post Grant Review, PTAB, PTAB Patent Trials, PTO Director Review of AIA Trials, PTO Sued Under the APANov. 6, 2025 In three nonprecedential orders issued today, the U.S. Court of Appeals for the Federal Circuit denied mandamus relief for petitioners challenging the Patent Trial and Appeal Board’s (PTAB) discretionary denials of inter partes review (IPR) petitions. These decisions—arising from parallel district court litigation and the recent rescission of interim guidance on IPR…
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USPTO Automated Search Pilot Program: Enhancing Early Prior Art Assessment
The United States Patent and Trademark Office (USPTO) has announced an Automated Search Pilot Program in the Federal Register on October 8, 2025. This initiative evaluates the effects of providing AI-generated search results prior to substantive examination of original, noncontinuing, nonprovisional utility patent applications. By issuing an Automated Search Results Notice (ASRN) to participants, the…
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Petitioners Target PTAB’s Discretionary Denials with Federal Circuit Mandamus Petitions
In a series of recent filings before the U.S. Court of Appeals for the Federal Circuit, petitioners including Motorola Solutions, Inc., SAP America, Inc., Google LLC, Samsung Electronics Co., Ltd., SanDisk Technologies, Inc., Western Digital Technologies, Inc., and HighLevel, Inc. are pressing for writs of mandamus to overturn PTAB denials of inter partes review (IPR)…
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PTAB Discretionary Denials and Patent Prosecution Topics at the 2025 Midwest IP Institute
Join us at the 2025 Midwest IP Institute on September 18 and 19 for a deep dive into patent, trademark, and copyright topics. On Friday, September 19, I’ll be moderating a special panel discussing recent PTO developments that impact patent practice. We’ll explore PTAB discretionary denials, the new prior art fee structure, and their influence…