Patent AI

State of play.

• The USPTO under Director Squires is simultaneously expanding what can be patented and tightening how patents are challenged. Design patent coverage now extends to AR/VR/holographic interfaces, AI inventions are affirmatively patentable, and the ASAP pilot deploys AI-assisted prior art search—while new ex parte reexamination procedures and the PIER pilot reshape the challenge and prosecution landscape (→ BakerHostetler Podcast on USPTO's AI Strategy and Guidance Evolution[12][15]).
• Inventorship is the sharpest litigation risk in the AI-assisted invention era. The Federal Circuit's precedential ruling in Fortress Iron v. Digger Specialties establishes that an uncorrectable inventorship omission—including a coinventor who cannot be located—invalidates a patent outright, with no AIA savings clause available .
• The Federal Circuit has closed appellate review of PTAB real-party-in-interest determinations and tightened equitable estoppel doctrine in the same cycle. FedEx v. Qualcomm forecloses RPI appeals under § 314(d); Fraunhofer v. Sirius XM requires defendants to prove silence actually influenced their business decisions—not merely that silence occurred—to sustain an equitable estoppel defense (→ FedEx v. Qualcomm: Fed Cir Rules PTAB Real-Party-in-Interest Challenges Unreviewable, Fed Cir Reverses Delaware Ruling on Equitable Estoppel in Fraunhofer v. SXM).
• China's IP enforcement posture has hardened materially. The SPC's IP Court saw a 66.7% year-over-year increase in punitive damages cases in 2025, foreign-related filings surged 34.1%, and the SPP published its first bilingual white paper signaling enforcement focus on AI, semiconductors, and renewables (→ China's SPP Releases First Bilingual 2025 IP Prosecution White Paper).
• For counsel advising technology companies, pharma clients, or cross-border IP portfolios, the practical baseline is a convergence of four pressures: USPTO procedural reform reshaping prosecution and challenge strategy, Federal Circuit decisions tightening inventorship, prosecution disclaimer, PTAB appellate review, and equitable estoppel doctrine, and China's escalating enforcement creating asymmetric exposure for foreign rights holders and defendants alike.

Where things stand.

• USPTO has affirmatively embraced AI patentability while requiring significant human contribution. Director Squires' August 2025 guidance confirms AI inventions are patentable; the November 2025 clarification treats AI tools as analogous to laboratory equipment rather than disqualifying co-inventors; the "significant human contribution" standard governs inventorship (→ BakerHostetler Podcast on USPTO's AI Strategy and Guidance Evolution[12][15]).
• Design patent coverage has expanded to virtual, AR, and projected interfaces. The USPTO's March 2026 supplemental guidance under 35 U.S.C. § 171 eliminates the requirement to depict a physical display panel and applies retroactively to all pending applications .
• PTAB institution decisions are final and unreviewable on appeal—and the scope of that bar has expanded. The FedEx v. Qualcomm precedential decision holds that RPI challenges under § 312(a)(2) are integral to the institution decision and therefore blocked from appellate review under § 314(d), with narrow exceptions only for constitutional violations or actions plainly outside the agency's statutory authority (→ FedEx v. Qualcomm: Fed Cir Rules PTAB Real-Party-in-Interest Challenges Unreviewable).
• Equitable estoppel now requires proof of actual reliance, not mere silence. The Federal Circuit's reversal in Fraunhofer v. Sirius XM holds that a patentee's five-year silence constitutes misleading conduct but does not establish estoppel unless the defendant proves its business decisions were actually influenced by that silence—market forces driving technology choices are insufficient (→ Fed Cir Reverses Delaware Ruling on Equitable Estoppel in Fraunhofer v. SXM).
• Ex parte reexamination is displacing IPR as the preferred patent challenge vehicle, with the USPTO introducing a new pre-order procedure allowing patent owners to file responses before the substantial new question determination, and the Director asserting a new gatekeeping role over institution .
• Parallel USPTO proceedings are now a material preliminary injunction variable. The W.D. Texas vacated a preliminary injunction based solely on a non-final USPTO reexamination rejection of all claims, giving defendants a clearer roadmap to derail injunctions through reexamination triggers .
• Federal Circuit doctrine on prosecution disclaimer has tightened. Puradigm v. DBG confirms that even unsuccessful prosecution arguments create binding claim scope disclaimers—a permanent narrowing regardless of examiner acceptance .
• Patent disclosure irrevocably forfeits trade secret status. International Medical Devices v. Cornell confirms that information disclosed in publicly available patents is "generally known" under California's UTSA, eliminating any concurrent trade secret claim—a structural constraint on dual-protection strategies (→ Federal Circuit Rules Patent Disclosures Bar Trade Secret Claims in Elist Penuma Case).
• The Federal Circuit's post-Amgen § 112 framework now distinguishes method-of-use claims from genus claims. Teva v. Eli Lilly holds that method claims using a well-known genus face a lower written description burden than claims directed to the genus itself .
• The DOJ Antitrust Division has filed multiple Statements of Interest affirming that patent enforcement and antitrust are complementary, reaffirming Noerr-Pennington protection for injunction requests and rejecting any presumption of market power from SEP ownership .
• The UPC has become the dominant forum for European life sciences patent disputes, with approximately 480 patents litigated across Munich, Mannheim, and Brussels divisions and a 50:50 revocation win rate establishing it as faster than parallel national proceedings .
• Mexico has enacted its most significant IP reform in six years, establishing supplementary patent term certificates of up to five years for pharma regulatory delays and eliminating Bolar exceptions—directly affecting generic market entry timelines under USMCA .
• The CRISPR priority dispute remains unresolved. The PTAB reaffirmed Broad Institute priority on remand without full briefing, and the UC coalition has signaled continued resistance—the case will likely return to the Federal Circuit, with billions in gene-editing licensing value at stake .
• AI-driven patent management tooling is attracting significant capital. Patlytics closed a $40M Series B, counts over 40% of the Am Law 100 as customers, and is expanding to EMEA—a signal that enterprise-grade AI patent automation is becoming a competitive necessity .

Latest developments.

• Federal Circuit reverses Delaware district court in Fraunhofer v. Sirius XM, holding that SXM's five-year silence period constituted misleading conduct but that SXM failed to prove actual reliance—market penetration drove its technology choices, not Fraunhofer's inaction—and remanding for further proceedings on the reliance question (→ Fed Cir Reverses Delaware Ruling on Equitable Estoppel in Fraunhofer v. SXM).
• Federal Circuit issues precedential decision in FedEx v. Qualcomm holding that PTAB RPI determinations under § 312(a)(2) are integral to the institution decision and unreviewable on appeal under § 314(d), closing a procedural avenue petitioners had used to challenge institution outcomes (→ FedEx v. Qualcomm: Fed Cir Rules PTAB Real-Party-in-Interest Challenges Unreviewable).

Active questions and open splits.

• What constitutes "significant human contribution" in AI-assisted invention? The USPTO has issued guidance treating AI tools as laboratory equipment, but no Federal Circuit decision has tested the standard in litigation—leaving inventorship documentation requirements, and the line between AI-assisted and AI-generated work, unsettled for prosecution and due diligence (→ BakerHostetler Podcast on USPTO's AI Strategy and Guidance Evolution[12][15]).
• How should IPR petitioners recalibrate RPI strategy after FedEx v. Qualcomm? With appellate review of RPI determinations now foreclosed, petitioners must resolve RPI exposure before filing—and patent owners must press RPI objections forcefully pre-institution knowing the PTAB's handling will not be corrected on appeal (→ FedEx v. Qualcomm: Fed Cir Rules PTAB Real-Party-in-Interest Challenges Unreviewable).
• What reliance evidence survives the tightened equitable estoppel standard after Fraunhofer v. Sirius XM? The Federal Circuit's actual-influence requirement means defendants in collaborative or licensing relationships must document that a patentee's silence—not independent market forces—drove their technology decisions; the remand will test what evidence satisfies that burden at trial (→ Fed Cir Reverses Delaware Ruling on Equitable Estoppel in Fraunhofer v. SXM).
• Does denial-of-infringement language in settlement agreements eliminate § 287(a) marking obligations? VDPP v. Volkswagen is pending at the Federal Circuit with the panel signaling interest in a bright-line rule—the outcome will reshape how NPE settlement agreements are drafted and how pre-suit damages exposure is calculated .
• How far does the patent-disclosure/trade-secret bar extend? International Medical Devices v. Cornell applies California's UTSA to hold patent-disclosed information "generally known," but the interaction with DTSA and varying state standards for dual-protection strategies remains incompletely mapped (→ Federal Circuit Rules Patent Disclosures Bar Trade Secret Claims in Elist Penuma Case).
• Will the CRISPR priority dispute produce a new Federal Circuit standard for conception in complex biotechnology? The PTAB's swift remand reaffirmation without full briefing is vulnerable to the same Federal Circuit critique that vacated the first decision—the outcome controls billions in gene-editing licensing value .
• What is the § 101 floor for software and AI-adjacent patents after the USPTO's pro-AI guidance? District courts continue granting early dismissals of patents covering digitized business processes (FMReps v. Ford), while the USPTO affirms AI inventions are patentable—the gap between prosecution-stage eligibility and litigation-stage § 101 challenges remains wide (→ BakerHostetler Podcast on USPTO's AI Strategy and Guidance Evolution[12][15]).

What to watch.

• SXM's reliance case on remand in Fraunhofer v. Sirius XM—the evidence SXM marshals to prove actual reliance will define the practical boundaries of equitable estoppel in technology partnership and post-bankruptcy patent reclamation scenarios.
• Federal Circuit decision in VDPP v. Volkswagen on § 287(a) marking and settlement agreement characterization—a bright-line rule would immediately affect NPE settlement drafting and damages exposure calculations across active portfolios.
• Whether petitioners and practitioners develop new pre-filing RPI diligence protocols in response to FedEx v. Qualcomm, and whether the USPTO issues guidance on what RPI disclosures satisfy § 312(a)(2) at the institution stage.
• USPTO finalization of ASAP pilot results and any expansion announcement after the June 1, 2026 deadline; low uptake despite fee waivers may prompt program redesign or discontinuation.
• Federal Circuit appeal in the CRISPR interference—whether the court accepts the PTAB's swift remand reaffirmation or imposes a more demanding conception standard will reshape biotech licensing strategy.
• China's revised punitive damages interpretations that took effect May 1, 2026—early cases applying the new framework will signal how aggressively courts will deploy escalated awards against foreign parties.