Prosecution Pointer 149

While the US patenting environment has changed dramatically in the past two years, high-tech startups still need to pursue patents—but with a different focus. Here’s how and why.

In our last post, we covered why building a trade secret management program matters more than blanket confidentiality designations. This post is about what a trade secret program makes possible when someone walks out the door, and why companies without one may be left with employment agreements that cannot do that job alone.

As organizations accelerate their adoption of generative AI, attention is increasingly shifting from the technology itself to the contractual frameworks that govern its use. What may appear to be standard licensing language can have significant implications for how businesses leverage AI tools, incorporate AI-generated content into their operations, and pursue future innovation strategies. This article examines one of the more consequential and evolving aspects of generative AI contracting, highlighting are

The Federal Circuit vacated a preliminary injunction in a patent infringement case involving electrical outlet cover products, finding that the district court made critical errors in its claim construction analysis. The appellate court determined that the lower court improperly imposed unsupported limitations on key patent terms and incorrectly applied a presumption of irreparable harm.

A federal district court in Idaho denied McCain Foods' post-trial motions in a design patent dispute over French fry shapes, upholding a jury verdict that found McCain's "Twisted Potato" willfully infringed Simplot's design patent. The decision reinforces critical procedural requirements for Rule 50 motions and clarifies standards for proving design patent infringement through photographs and marketing materials.

In VDPP, LLC v. Volkswagen Group of America, Inc., the Federal Circuit addressed whether a non-practicing entity that licenses its patent through settlement agreements must ensure those licensees comply with patent marking requirements under 35 U.S.C. § 287(a). The court's ruling clarifies that patent owners cannot avoid marking obligations simply because they don't manufacture products themselves...

The Seventh Circuit's 2024 decision in Motorola Solutions v. Hytera Communications established that the Defend Trade Secrets Act can reach conduct outside the United States and permit recovery of damages based on worldwide sales. District courts have begun applying this precedent, expanding the potential scope of liability for cross-border trade secret disputes. The ruling raises important questions about how minimal a US connection may be before federal trade secret protection no longer applies.

Director Squires issued written opinions in two recent PTAB proceedings examining critical threshold questions about prior art qualification. One case explored whether sufficient evidence supported an earlier invention date to antedate prior art, while the other determined if a reference was publicly accessible before the patent's priority date.

Recent trade secret case law reveals critical standards for proving misappropriation, from the Ninth Circuit's reversal of a $57 million judgment over incorrect jury instructions on the "not readily ascertainable" element, to the Eighth Circuit's requirements for adequate trade secret identification. Courts continue to refine extraterritorial application of the DTSA and standards for demonstrating actual use of allegedly misappropriated information.

Hermione Thompson and John Leeming are partners and European and UK Patent Attorneys at J A Kemp.

The Federal Circuit vacated a preliminary injunction in a patent infringement case involving electrical outlet cover products, finding that the district court made critical errors in its claim construction analysis. The appellate court determined that the lower court improperly imposed unsupported limitations on key patent terms and incorrectly applied a presumption of irreparable harm.

Director Squires issued written opinions in two recent PTAB proceedings examining critical threshold questions about prior art qualification. One case explored whether sufficient evidence supported an earlier invention date to antedate prior art, while the other determined if a reference was publicly accessible before the patent's priority date.

The Federal Circuit dismissed a patent owner's appeal in In re Hybir, Inc., ruling that a settlement agreement containing only a nominal $100 optional license tied to the appeal's outcome failed to create a live case or controversy. The court determined that such an arbitrary sum functioned merely as a "side bet" on the appeal rather than representing real economic significance or concrete dispute necessary to sustain federal jurisdiction.

The Federal Circuit issued 23 opinions in June and July 2026 reviewing PTAB post-grant proceedings, with affirmance rates varying significantly between the two months. Cumulative statistics through July 31, 2026 reveal patterns in how the appellate court has handled over 1,600 IPR, CBM, and PGR appeals since these proceedings began.

The European Patent Office's Enlarged Board of Appeal has issued its decision in G 1/25, addressing the contentious practice of description amendments in European patent applications. This decision establishes new guidelines on when patent descriptions must be modified to align with claims, potentially reshaping prosecution strategies across Europe. The ruling adopts a middle ground between the EPO's traditional approach requiring extensive amendments and recent case law suggesting such changes lack explici

California regulators brought their first enforcement action against a data broker under both the CCPA and the Delete Act, signaling increased scrutiny of businesses that collect and sell personal information without a direct consumer relationship. The decision makes clear that data minimization applies to consumer rights requests and that companies cannot require consumers to provide more personal information than reasonably necessary to exercise their privacy rights.

This is part of a series of articles discussing recent orders of interest issued in patent cases by the United States District Court for the District of Massachusetts.

The Sixth Circuit's decision in Nelson v. MillerKnoll examines whether a furniture company's ownership claims to the iconic Bubble Lamp design were authorized under a 2006 royalty agreement, and whether the designer's heirs ratified that arrangement by continuing to accept payments. The case hinges on interpreting contract language distinguishing between licensing rights and outright ownership of intellectual property.

When a patent owner grants an exclusive license, does it automatically lose the right to sue infringers? The Federal Circuit addressed this critical question in two parallel cases, examining what retained rights are necessary to preserve constitutional standing. The court's analysis reveals how specific contractual provisions—including sublicense approval authority, royalty rights, and enforcement participation—can determine whether a patent owner maintains a meaningful legal stake in its patent

The Patent Trial and Appeal Board cancelled over half of instituted claims across IPR and PGR Final Written Decisions from June to July 2026, with significant variation in outcomes across different technology centers. This analysis examines claim survival rates, motion to amend statistics, and per-case disposition patterns compared to cumulative historical averages.