Are Your AI Prompts Discoverable? Recent Cases Every Company and Law Firm Should Know
Are your ChatGPT, Claude, and Gemini prompts and responses safe from discovery? Recent decisions shed light on the issue to reveal when your AI chat history can be targeted in discovery and when it remains off-limits. How current rules are being applied to frontier generative AI and what every company, in-house counsel, and law firm must do to avoid an AI discovery disaster.
Do Not Let Unclaimed Functions Compromise Your Means-Plus-Function Analysis
In a recent decision by the U.S. Court of Appeals for the Federal Circuit, the appellate court reversed a trial court's finding that a patent claim was invalid for indefiniteness under 35 U.S.C. § 112(f). The decision emphasizes that when construing means-plus-function claims, courts must focus strictly on structures that perform the claimed function, without disqualifying them for failing to handle unclaimed tasks mentioned in the specification.
New USPTO Guidance Provides Broader Flexibility for Computer-Generated Designs
On March 12, 2026, the United States Patent and Trademark Office (USPTO) published new examination guidance for design patents related to computer-generated interfaces and icons in response to feedback on past guidance that stakeholders believed unnecessarily limited design applications. Comments on the new guidelines must be submitted by May 12, 2026. While the new guidance is not substantive rulemaking, the USPTO has instructed all USPTO personnel, including the Patent Trial and Appeal Board (PTAB), to follow this guidance even if it is inconsistent with previous guidance.
Game Plan Interrupted: A Lesson in Assignment of Trademark Rights
The United States Court of Appeals for the Federal Circuit recently affirmed a final decision of the United States Patent and Trademark Office's (USPTO) Trademark Trial and Appeal Board (TTAB) cancelling Game Plan, Inc.'s registration for its stylized mark I AM MORE THAN AN ATHLETE. GP GAME PLAN and dismissing Game Plan's opposition to Uninterrupted IP, LLC's six intent-to-use applications for marks containing "I AM MORE THAN AN ATHLETE" and "MORE THAN AN ATHLETE."
Another Example of the Peril of Functional Language in Patent Claims
Patent practitioners have long relied on functional language such as "configured to," "adapted to," and "capable of," as a strategy for broadening claim scope by using such terms to capture a structural range of elements that can perform a function rather than one specific configuration. However, this tactic comes with risks of unintended judicial interpretation when such terms are not used with a clear structural foundation. A recent nonprecedential decision by the U.S. Court of Appeals for Federal Circuit (Federal Circuit)—Blue Buffalo—serves as a reminder that when functional terms are used without precise intent, this strategy can backfire.
European SMEs Can Access Up to €7,320 for IP Filings
On February 2, 2026, the European Commission, in cooperation with the European Union Intellectual Property Office (EUIPO), launched the 2026 SME Fund. This grant initiative enables eligible small and medium-sized enterprises (SMEs) in the European Union and Ukraine to receive partial reimbursement of some official intellectual property fees.
China Officially Releases the Trademark Law (Draft for Revision) for Public Comment
On December 27, 2025, the Standing Committee of the National People's Congress of China officially released the "Trademark Law of the People's Republic of China (Draft for Revision)" for public comment. This revision marks the fifth modification since the implementation of China's Trademark Law in 1983, and it deeply reconstructs the system in terms of bad-faith registration, procedural efficiency, and the exercise of rights. Although the draft revision deleted the previously controversial proposals such as the "mandatory five-year use statement" and the "mandatory transfer of bad-faith registrations," its core policy objectives of curbing bad-faith applications, strengthening use obligations, and improving procedural efficiency have not changed.
IP Tribunal of Supreme People's Court Awarded Punitive Damages of $295 Million Over the Past Seven Years
On January 28, 2026, the Supreme People's Court of China (SPC) held a press conference to summarize the results of intellectual property cases decided since the establishment of its Intellectual Property Tribunal on January 1, 2019. Notable data highlighted during the conference included the application of punitive damages, which reflects China's increased emphasis on strengthening intellectual property protection in recent years.
Third-Party Observations at the EPO: A Simple and Cost-Effective Tool, But Use It Wisely
Last month, the European Patent Office (EPO) issued a notice on the processing of third-party observations (TPOs) and the new online form for filing them. This is a good opportunity to review the key principles of TPOs and their potential effects, both positive and negative.
USPTO Issues New Guidance on AI-Assisted Inventorship, Rescinding Its 2024 Guidance
On November 28, 2025, USPTO Director John Squires issued new guidance on AI-assisted inventorship and explicitly rescinded the February 13, 2024, guidance that had been issued by his predecessor Director Vidal. At issue is what human activity rises to the level of inventorship when a human uses an AI tool in a manner that results in an invention.
