35 U.S.C. § 112 in IPR: I know you cannot use it to invalidate a claim, but how about breaking the priority chain?
Pilseon Yoo
It is well established that “a petitioner in an inter partes review … is not permitted to assert a ground of unpatentability under 35 U.S.C. § 112.” Dexcowin Golabl, Inc. v. Aribex, Inc., IPR2016-00436, Paper 12 (PTAB July 7, 2016). As such, IPR petitions solely relying on lack of written description under § 112 cannot avoid institution denial. A few IPR cases, however, teach an effective way for a petitioner to frame a § 112 dispute as a priority date dispute. Petitioners in those IPRs have successfully established the challenged patents were not entitled to an earlier filing date because they lacked written description support in the parent application under § 112.
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RESTORE Patent Rights Act of 2024
Madison Kaufmann
On December 18, 2024, the Senate Judiciary Committee held a hearing concerning S. 4840, a bill introducing the RESTORE Patent Rights Act of 2024 (“RESTORE Act”). As stated on its face, the purpose of S. 4840 is to amend Title 35 of the United States Code—the Patent Act—“to establish a rebuttable presumption that a permanent injunction should be granted in certain circumstances, and for other purposes.” S. 4840 only proposes a single sentence of legislation, but it has the potential to dramatically alter the landscape of patent litigation.
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The IP Practitioner’s Guide for Advising the Next Generation of Startups
Steve Maule, Michael Silliman
The last few years have thrown startups a whirlwind of challenges: a steep drop in venture capital investment, a highly competitive marketplace, the artificial intelligence (AI) revolution, and an abundance of remote work. Helping founders navigate this evolving landscape will require intellectual property (IP) practitioners to stay ahead of the curve.
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*This article was previously published in Landslide, December/January 2025 issue.
AI For Patent Drafting in 2025
Parker Hancock, Christopher J. Palermo
Can AI be used to draft a patent application? The answer is complicated. The capabilities of AI have been advancing very rapidly, which seems to suggest that it could be possible. For example, at the end of 2024, a leap forward was made when AI researchers discovered the idea of “test-time compute” (TTC), or the basic idea that the quality of AI outputs can be improved by letting large language models (LLMs) think longer before arriving at an answer. This discovery has led to extraordinary performance improvements on many key benchmarks.
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Change on the Horizon?: 2025 Begins With Numerous Patent Bills Pending
Rob Maier, Eric Faragi and Benjamin Bafumi*
The U.S. patent legal landscape in 2025 is poised for change. The incoming presidential administration is coupled with interim changes in leadership at the USPTO after Kathi Vidal's departure, and several newly vacant, fillable commissioner seat opening at the ITC. Technology such as artificial intelligence- and changing attitude towards those technologies- are evolving at an accelerating pace.
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This article was previously published in the New York Law Journal on January 14, 2025
*Benjamin Bafumi, a law clerk at Baker Botts, assisted in the preparation of this article.
Trust, But Verify: Avoiding the Perils of AI Hallucinations in Court
Danny David, Richard Harper, John Lawrence, Maggie Welsh, Travis Wofford, Dominic Cruciani and Michelle N. Molner
The rise of generative Artificial Intelligence (AI) presents lawyers with powerful tools and tactical advantages to streamline many aspects of their practice. AI helps lawyers provide more efficient, effective legal services to their clients. But lawyers must exercise caution when utilizing these new AI platforms to ensure they comply with their ethical obligations. A recent case from the Eastern District of Texas highlights a recurring ethical issue: litigators citing hallucinated case law generated by AI without verifying the accuracy (or even the existence) of the cases cited in a brief to the Court.
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This Month: Our Take on AI
Joseph Cahill
European Data Protection Board Issues Opinion on AI and Personal Data: On December 17, 2024, the European Data Protection Board (EDPB) issued Opinion 28/2024, offering guidance on the processing of personal data in AI systems. The Opinion emphasizes that AI models trained on personal data may not be truly anonymous—controllers must ensure identifying information is not reasonably likely to be extracted. The EDPB outlines a three-step test for establishing legitimate interest as a lawful basis:
- Identifying the Legitimate Interest – It must be lawful, clearly defined, and real (not speculative).
- Necessity Test – The processing must be essential to achieve that interest, with no less intrusive alternative.
- Balancing Test – Controllers must weigh their interest against individuals’ fundamental rights, considering data subjects’ expectations and potential mitigating measures (e.g., pseudonymization).
Additionally, the Opinion underscores consequences of unlawful processing and describes how improper data use in AI development can affect subsequent operations. Nick Palmieri provides more details here: "European Data Protection Board Releases Opinion on the Use of Personal Data with Artificial Intelligence."
Two Paths to AI Regulation: Colorado vs. California: State-level AI regulation in the United States continues to evolve along two distinct lines: capability-based oversight and use-case-driven rules. Colorado’s newly passed law (effective February 1, 2026) takes a use-case-focused approach, requiring robust compliance programs for “consequential decisions” in fields like education, employment, and healthcare. This includes mandatory risk assessments and ongoing monitoring of high-risk AI systems. Meanwhile, California’s proposed SB 1047, though vetoed, would have regulated AI models above certain computing-power and cost thresholds, requiring third-party audits and “kill switches” for large-scale systems. Both frameworks highlight how legislators are grappling with balancing technological innovation against risks like algorithmic discrimination and misuse. You can read more about this comparison here: "Two Paths to AI Regulation: Capability vs. Use Case in State-Level Approaches."
The UK Government Signals the “Status Quo” Cannot Continue for AI and Copyright: Across the Atlantic, the UK government has made it clear that existing rules on AI and copyright will not suffice in the face of rapidly advancing technology. A recent government consultation proposes a text and data mining (TDM) exception with an opt-out mechanism for rightsholders who “reserve their rights.” This approach aims to balance enabling “world-leading AI models” with preserving creators’ control over their works. The consultation also highlights practical solutions—such as machine-readable “Do Not Train” protocols—to safeguard both innovation and copyright. Although no final decisions have been made, the UK’s emphasis on interoperability and international collaboration suggests that forthcoming regulatory changes could influence how other jurisdictions tackle AI and copyright. You can read more about this consultation here: "The UK Government Signals the "Status Quo" Cannot Continue for AI and Copyright."
January 2025 Intellectual Property Report Recap
In case you missed it, here is a link to our January 2025 Intellectual Property Report that looked at:
- Defending “Sad Beige”: When Imitation is Not Flattery
- USPTO Announces New Fee Schedule for 2025
- Fourth Quarter 2024 Federal Circuit Law Update
- This Month: Our Take on AI
