Category: Patent Portfolio Management
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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 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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What’s Important Now in Intellectual Property?
With all that is going on in world events and a pandemic that has raged on for over a year, it’s hard to focus on intellectual property as an important topic to discuss. But we must because innovation has carried on and patents, trademarks, copyrights, and trade secrets are still valuable assets that have to…
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Patent Due Diligence and Evaluation After the AIA
Many factors must be considered for due diligence and valuation of a patent portfolio. The patent owner’s desire to have broad claims that capture a large number of infringements must be tempered against its need for claims that will not be deemed invalid in view of prior art. Before the America Invents Act (AIA), patents…