By David Spears
Intellectual Property Attorney. Burris Law
Power up the flux capacitor because aspects of patent law are moving fast. AI is changing how inventions are conceived, how legal work is prepared and how patent disputes are managed.
Recent decisions involving AI-assisted inventorship, AI-generated legal filings and post-grant proceedings show default assumptions are no longer enough. Protecting inventorship and building a successful patent strategy when AI is involved requires documenting human contribution, verifying AI-assisted work and making early, informed procedural decisions.
AI and Inventorship: The Lesson from Thaler v. Vidal
One of the key AI-related patent decisions is Thaler v. Vidal, a 2022 Federal Circuit case addressing whether an AI system can be named as an inventor on a U.S. patent application.
What happened: Imagination Engines CEO Stephen Thaler filed patent applications listing his AI system DABUS as the inventor. The USPTO rejected the applications because the Patent Act requires an inventor to be a person. Thaler challenged, arguing that the law should recognize AI-generated inventions. The Federal Circuit rejected his argument and held that the Patent Act requires inventors to be human beings, explaining: “Here, there is no ambiguity: the Patent Act requires that inventors must be natural persons; that is, human beings.” The Supreme Court refused to hear the case.
The court’s reasoning: The Federal Circuit based its decision on statutory interpretation. The Patent Act defines an inventor as an “individual,” and the court concluded that “individual” means a human being unless Congress clearly says otherwise. Importantly, the court did not decide whether inventions made by humans using AI assistance are patent eligible … “not confronted today with the question of whether inventions made by human beings with the assistance of AI are eligible for patent protection.”
Why it matters: AI-assisted inventions are not automatically excluded from patent protection, but the human contribution must be identified and documented. If an applicant treats inventorship as a formality and fails to determine what the human conceived, the resulting patent may face validity challenges later. Patent applicants using AI should conduct structured inventor interviews. Ask: What did the human conceive? What did the AI generate? What did the human select, modify, test, refine or apply?
AI Sanctions and the Duty to Verify: Lexos Media v. Overstock
Another important AI-related development is Lexos Media IP LLC v. Overstock.com Inc., a 2026 decision from the U.S. District Court for the District of Kansas involving the use of generative AI in a patent litigation filing.
What happened: Lexos Media involved a patent infringement case in which attorneys submitted a brief containing fabricated case citations, misquoted authority and nonexistent legal support. The errors were later traced to generative AI used in drafting. Opposing counsel flagged the problems, and the attorneys admitted AI had been used and the citations had not been checked. The court found violations of Rule 11(b), which requires attorneys to conduct a reasonable inquiry before filing papers with the court. Five attorneys were sanctioned with total fines of $12,000.
The court’s reasoning: The court’s reasoning was straightforward: filing a brief is a certification of accuracy. AI may assist with drafting or research, but it does not replace an attorney’s duty to verify legal authority, quotations and citations before submitting them to a court. A reasonably competent attorney must verify accuracy.
Why it matters: The lesson extends beyond litigation. In patent prosecution, filings before the USPTO carry duties of candor and disclosure. AI-generated mistakes in prior art summaries, office action responses or legal standards may go undetected at first, but they can become prosecution history admissions or create grounds for later disputes. AI can support efficiency, but every citation, quote, reference characterization and legal standard must be verified by a human before filing.
PTAB Strategy and Parallel Litigation: Apple v. Fintiv and In re Tesla
One of the most important PTAB strategy decisions remains Apple Inc. v. Fintiv, Inc., a 2020 PTAB precedential decision addressing discretionary denial of inter partes review when parallel district court litigation is already underway. Recent Federal Circuit activity, including In re Tesla, also reinforces the importance of early strategic planning.
What happened: Apple v. Fintiv involved a patent dispute in which Apple filed an IPR petition while related district court litigation was already moving forward. The PTAB considered whether instituting review would promote efficiency or create duplicative proceedings given the timing and overlap with the district court case. The decision became important because it outlined factors the PTAB may consider when deciding whether to institute review in the face of parallel litigation. In In re Tesla, Tesla challenged USPTO/PTAB decisions denying institution of review. The argument focused on whether certain USPTO procedures, particularly policy-based institution decisions, were legally valid. Tesla sought relief to overturn non-institution decisions.
Why the decisions matter: Fintiv does not mean IPR is unavailable when district court litigation is pending. It means IPR strategy must be evaluated early and in context. The district court timeline, judge’s tendencies, likelihood of a stay, overlap between invalidity arguments, prior art strength and parallel proceedings all matter. Tesla reinforces that institution decisions can be difficult to unwind once made, so parties should consider post-grant options before the dispute gains momentum. Petition scope also matters. For example – in SAS Institute Inc. v. Iancu, a 2018 U.S. Supreme Court decision – the Court held that once IPR is instituted, the PTAB must review all challenged claims or none of them. For challengers, that means petitions should be built carefully from the start. For patent owners, institution may bring the full challenge into the proceeding, requiring a broader defensive strategy.
Key Takeaways for Patent Owners, Applicants and Practitioners
Recent developments point to several practical lessons for patent owners, applicants and practitioners.
- AI can assist in invention, but it cannot be the inventor. After Thaler v. Vidal, patent applicants must identify a human inventor and document the human contribution behind the inventive concept.
- Inventorship should not be treated as a formality. When AI tools are used in research, design, development or testing, applicants should determine what the human actually conceived, selected, modified or refined.
- AI-generated legal work must be verified. Lexos Media v. Overstock.com shows that courts will not excuse fabricated citations, misquoted authority or inaccurate filings simply because AI was involved. In patent prosecution, the same caution applies to prior art summaries, office action responses and legal arguments submitted to the USPTO.
- Post-grant strategy should be evaluated early. IPR, ex parte reexamination and district court invalidity arguments each serve different purposes. Timing, forum, estoppel risk, parallel litigation and the strength of the prior art should be considered before selecting a path.
In 2026, successful patent strategy will depend less on default playbooks and more on disciplined documentation, careful verification and early strategic decisions.
About David Spears – An intellectual property attorney at Burris Law, David helps individual inventors, companies and startups protect inventions through domestic and international patent strategies. He guides clients through the full patent process, from patentability determinations and drafting applications, through to prosecuting Office Action responses before the USPTO. David holds a mechanical engineering degree from Michigan State University and has experience across industries including robotics, automotive, refrigeration systems, consumer products and manufacturing.