Updates on IP news from our global team! | | |
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. The ruling in Gramm v. Deere & Company highlights the pitfalls of over-restricting corresponding structure in means-plus-function analysis. Particularly, the ruling serves as a reminder to patent practitioners that the structures disclosed in the specification for means-plus-function terms need only perform the function recited in the claim. They are not required to perform additional functions mentioned in the specification that are not recited in the claim language. | | 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. | | |
継続出願（continuation application）
／一部継続出願（CIP application）を利用した特許ポートフォリオの構築について
| | 日本の優先権主張出願や分割出願と異なり、米国の継続出願は、親出願が継続中であれば何度でも提出することができます。企業は、継続出願を利用して取得した特許を、複数の特許の束、すなわち特許ポートフォリオとして計画的に活用することにより、競合製品に対する優位性を築くことができます。 | | ASAP!: USPTO Seeks Participants for Six-Month Old AI Search Pilot | | With less than one month remaining in the original Artificial Intelligence Search Automated Pilot (ASAP!) that began on October 20, 2025, the USPTO announced key modifications with respect to timing and fees. | | |
USPTO Adds U.S. Manufacturing and Investment as Discretionary Factors
in IPR and PGR Institution Decisions
| | On March 11, 2026, USPTO Director John A. Squires issued a Memorandum identifying additional discretionary institution factors for inter partes review (IPR) and post-grant review (PGR) proceedings. The Memorandum signals that the USPTO will place greater weight on domestic economic and industrial policy concerns when deciding whether to institute review. | | European Patent Filings Hit Record High, Surpassing 200,000 in 2025 | |
The European Patent Office (EPO) has published its 2025 statistics on European patent applications (including direct and Euro-PCT filings). Applications rose by 1.4% year over year, reaching nearly 202,000. By technology field, computer technology remains the leading area, with approximately 17,850 applications.
READ MORE
| | |
EPO and IP Australia Launch PCT Pilot Program
March 2026
| |
Effective March 1, 2026, Australian applicants can designate the European Patent Office (EPO) as both the International Searching Authority (ISA) and International Preliminary Examining Authority (IPEA) under the PCT, as part of a two-year pilot program.
READ MORE
| | Qatar Trademark Office: Remote Work and Filing Updates | |
Due to the implementation of remote work protocols, the Qatar Trademark Office has temporarily suspended the issuance of physical receipts for trademark publication, opposition, registration, and renewal actions that are paid manually at the Ministry of Commerce and Industry counter.
READ MORE
| | Bahrain Eases Document Submission Deadlines for Industrial Property Applications | |
The Bahraini Ministry of Industry and Commerce has implemented temporary measures to address ongoing difficulties in completing notarization and legalization procedures, as well as delays in submitting required documents within statutory deadlines.
READ MORE
| | |
PCT Filings Continue to Rise in 2025
| |
International patent activity under the Patent Cooperation Treaty (PCT) continued to grow in 2025, with applications increasing by 0.7% to reach 275,900 filings worldwide. With a 5.3% increase compared to 2024, China remained the leading country of origin for PCT applications, with 73,718 filings.
READ MORE
| | Oral Proceedings at The EPO: The Drafting of Minutes is Now AI Assisted | |
Following the success of the 2025 pilot project, the European Patent Office is expanding the use of AI for drafting minutes of oral proceedings, not only before Examining and Opposition divisions, but also before the Unitary Patent Protection Division (UPPD).
READ MORE
| | | The IP5 Meetings were held in Seoul, Korea, from March 30 to April 2. John Osha participated in a series of substantive discussions alongside members of AIPLA, IPO, BE, KINPA, and JIPA. Our thanks to the organizers for planning and coordinating this well-structured event. |
| |
We look forward to connecting with fellow attendees at INTA's 2026
Annual Meeting in London. Request a meeting with our team here.
| | | | |
