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How to Patent Your Invention: Step-by-Step Guide to Filing Your Patent Application

Brett Trout

If you’ve created a new product, process, or technology, obtaining a utility patent is a critical step to protect your invention and secure exclusive rights in the marketplace. When people talk about filing a “patent,” they are typically referring to a “non-provisional” “utility” patent application. This is opposed to other types of patent applications, such as a design patent application or a provisional patent application. A non-provisional utility patent application is the formal path to patenting your invention through the United States Patent and Trademark Office (USPTO).

In this guide, we break down the U.S. patent process step-by-step so you can understand what to expect and the pitfalls to avoid. 

What Is a Utility Patent?

A utility patent protects the functional features of an invention—how it works, how it’s made, and how it’s used. This is the most common type of patent granted by the USPTO. If investigating how to get a patent, a non-provisional utility application is what you are looking for, it is the full, formal process required to obtain enforceable patent rights allowing you stop competitors from making, using, or selling your invention.

Step 1: Conduct a Patentability Search

Before investing in a patent application, it is important to determine whether or not your invention is:

  • Novel – Not already disclosed or patented
  • Non-obvious – More than an expected improvement
  • Useful – Functionally operable

A search of the prior art (all publicly available information) helps identify existing patents or publications that may affect your chances of approval. Online databases like Google Patents and the USPTO’s website contain a wealth of useful information regarding the potential obviousness of your invention. While a patent attorney can perform a broader, more detailed, prior art search for you, even patent attorneys cannot search recently filed patent applications as the Patent Office keeps them confidential. So while patent searches are good, there is no way to guarantee that your invention is patentable until you actually file your application. 

Step 2: Choose What Kind of Patent to File

You can file a provisional patent application first to establish an early filing date, but this is only temporary and not examined by the USPTO. To actually get a patent, you’ll need to file a non-provisional utility patent application within 12 months of filing your provisional application. While your provisional patent may preserve some of your dates to keep your invention out of the public domain, do not rely on a provisional patent application without expert advice as to what is preserved and what is not. A provisional patent application only covers what you have included in the application. If, you need to add additional material to support your new patent claims in your new non-provisional utility patent application, that new material and those new claims will receive a new filing date, which may place them in the public domain and invalidate your entire patent application.

Step 3: Prepare Your Patent Application

This step is the heart of the patent process. A strong patent application includes:

  • Specification – Detailed technical description
  • Claims – Legal language defining your invention’s scope
  • Drawings – Diagrams or illustrations, if needed
  • Abstract – A concise summary

The scope of all patents is determined by the claims. A claim is a one sentence description of your invention. You want your claim to include a combination of elements that is new and non-obvious, but not include so many elements that it is easy for a competitor to eliminate one of those elements and avoid infringing the patent. Drafting strong claims is therefore extremely important. While it is possible for an inventor to draft a patent claims themselves, it is almost impossible for an inventor without patent drafting experience to draft a good, let alone a great, patent claim. Unfortunately, the Patent Office does not care if your claim is good or bad, and will be more than happy to grant you a bad patent with bad claims. Compounding the problem is the fact that you will not know if your patent is good or bad until you go to enforce it, possibly years later, at which point it will be too late to fix. 

Enlisting a registered U.S. patent attorney will ensure your invention, as described in your patent application, is clearly defined and strategically protected from potential competitors. Be discriminating in your choice of patent attorneys. If you hired fifty patent attorneys to draft a patent application covering your invention, no two of the applications would be the same. They would all vary in scope and defensibility. So be sure to choose a patent attorney with experience drafting patents covering your technology. It is also helpful, but not essential, to choose a patent attorney who has experience licensing patents and litigating patents in federal court. 

Step 4: File with the USPTO

Once completed, your patent application is filed electronically through the USPTO’s patent filing system, along with applicable government filing fees. If you are an individual inventor or a small business, you may be eligible for reduced filing fees. Once you file your patent application, you’ll receive an official filing receipt and application number. From this point, your application is pending and assigned to an examiner. Although you are now “Patent Pending,” under most circumstances you cannot sue anyone for infringement until the Patent Office actually grants your patent. From this point forward the Patent Office has strict deadlines that must be followed. Failure to adhere to these deadlines could lead to your patent application being irreparably abandoned. Your patent attorney will have specialized software to docket these deadlines and will remind you of these deadlines well in advance. 

Step 5: Respond to Office Actions

After some time (currently about two years), the USPTO will issue an Office Action—either approving your claims or raising objections based on prior art or technical issues. The Office Action will likely state the patent examiner is rejecting your patent applications based on several federal statutes. Amending your application and/or traversing the examiner’s rejections, while retaining obtain maximum patent coverage, requires a detailed knowledge of patent law and patent claim drafting, as well as the technicalities and practicalities of USPTO administrative practice. While it is possible for an inventor to respond to an Office Action, it is once again almost impossible for an inventor without experience practicing before the USPTO to draft a response that not only addresses the examiner’s rejections, but also preserves maximum patent coverage for the invention. In almost all cases it is best to have a patent attorney address and respond to the Office Action.

This phase of the process, known as patent prosecution, can take 2-6 years or more depending on the complexity and workload at the USPTO.

Step 6: Receive Notice of Allowance

After some back-and-forth, if the examiner finds no other similar inventions, the USPTO will send you a Notice of Allowance. After paying the issue fee, your utility patent will be officially granted. At this point you may enforce your patent against infringing competitors. 

Step 7: Maintain Your Patent Rights

Your utility patent will remain in force for up to 20 years from the filing date, as long as you pay the required maintenance fees at 3.5, 7.5, and 11.5 years. Your patent attorney will also docket these dates for you and remind of the amounts due well in advance of the deadlines. 

DIY vs. A Patent Attorney?

Drafting and filing a patent application may seem straightforward, but the language, technical detail, and legal strategy behind a successful non-provisional patent application are complex. The process is so complex, that not even regular attorneys are allowed to prepare and file patent applications for inventors. To prepare patent applications an attorney must: 1) have an undergraduate degree that includes specific STEM classes; and 2) pass an additional bar examine covering patent specific practice.  These requirements are to ensure that your patent lawyer is qualified, your rights are protected, your claims are strong, and your invention is positioned to succeed.

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By Brett Trout
April 7, 2025

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Like a Bad Penny, Congressional Attempts to Legalize Site-Blocking Have Returned

Brett Trout

More than a decade ago, Americans stood together to stop Congress from enacting both the Stop Online Piracy Act (SOPA) and the PROTECT IP Act (PIPA)—two bills that threatened to shatter the foundation of a free and open internet. Back then, I wrote about the many dangers of SOPA, PIPA and site-blocking in general. 2012 moment marked a powerful public rejection of government-mandated internet censorship. Today, Congress is back with a new version of the same dangerous idea: the Foreign Anti-Digital Piracy Act (FADPA). And once again, it’s time to say no.

FADPA: The Return of a Bad Idea

FADPA is being pitched as a narrowly tailored solution to target large-scale, foreign-run piracy websites. Supporters claim it will protect American jobs, creativity, and online safety—all while respecting due process and free speech.

But a closer look reveals a different reality: this bill revives the same dangerous concept that made SOPA toxic. It creates a legal mechanism to block access to entire websites—on the mere allegation of copyright infringement—without giving those websites a meaningful chance to defend themselves.

Who Watches the Watchmen?  

While FADPA comes equipped with promises of judicial oversight, if the Foreign Intelligence Surveillance Act taught us anything, it is that the federal judiciary is often nothing more than a rubber stamp when it comes to approving unconstitutional government overreach. Even if the government was capable of overseeing itself, FADPA is still a censorship tool that enables powerful media companies to control your access to information. That should sound alarm bells for anyone who cares about digital freedom, innovation, or democracy.

Why Site-Blocking Doesn’t Work

Supporters of FADPA tout examples from the UK, Australia, and Portugal where site-blocking has reduced piracy traffic. But the truth is more complicated.

Modern websites often rely on shared hosting and cloud infrastructure. Blocking one infringing site could unintentionally shut down hundreds of unrelated sites—small businesses, nonprofits, personal blogs—collateral damage in a war they had no part in. Government-connected large companies and pirates are already prepared for this. Independent companies and individuals are not.

Even if one of the websites shut down as a result of FADPA was a pirate website, these determined infringers can simply set up shop on a new domain within hours. VPNs and DNS tweaks are simple tools that render site-blocking efforts easy to bypass for those who make it their business. These tools are vital lifelines in authoritarian countries, where they help people access independent news and uncensored content. Forcing Americans and small independent American companies to rely on those same tools is an unacceptable outcome of domestic legislation.

A Blunt Instrument That Silences Legitimate Speech

Congress has a long and storied history of passing legislation that does exactly the opposite of what it purports to do and FADPA is no different. FADPA does not just threaten pirate websites—it threatens everyone. A site that is incorrectly blocked won’t display a helpful notice or explanation. It will just vanish. To users, it will look like a glitch. Lawful businesses and content creators could be shut out without warning or recourse.

Worse, the process is often “ex parte,” meaning the accused website operator isn’t even present to defend themselves. That is not justice—that is corporate-driven censorship masquerading as copyright enforcement.

History Shows We’ve Been Here Before

In 2012, the internet community rose up against SOPA and PIPA. Tech companies, advocacy groups, and millions of internet users protested the dangerous overreach of site-blocking laws. FADPA may wear a new face, but it raises the same old threats: chilling effects on speech, unjust takedowns, and a fundamental shift in how the internet operates.

Even Congresswoman Zoe Lofgren, who introduced FADPA, was once a key opponent of SOPA. Today, she insists FADPA is more measured, fairer. But even well-intentioned tools can be turned into weapons. Giving courts and corporations the power to block websites—even foreign ones—sets a precedent that can, and will, be expanded, abused, and exported.

What We Need Instead

There’s no question that digital piracy is a problem. But the answer isn’t to undermine the architecture of the open web. Instead, we should:

  • Support innovation in legal content distribution.
  • Fund smarter enforcement strategies focused on the actual bad actors, not the infrastructure that powers the web.
  • Promote transparency and accountability in any copyright enforcement mechanism.

The Bottom Line

FADPA is not just about piracy. It is about power—who has it, who gets to control what we see online, and how easily that control can be misused.

Once again, we find ourselves at a crossroads. We can either defend the internet as a free and open platform for expression and innovation—or allow it to be slowly fenced off by private interests and government overreach.

So what can you do? Contact your congressional representatives directly and tell them that site-blocking is not the answer. We must not repeat the mistakes of the past. We should instead look to build a better digital future—one where creativity is protected, and freedom is preserved.

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By Brett Trout
April 3, 2025

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The Most Lucrative Patents in History — And What Your Company Can Learn from Them

Brett Trout

Patents don’t just protect ideas—they shape industries, generate billions in revenue, and, in the right hands, create empires. Across tech, telecom, pharma, and agriculture, a handful of landmark patents have rewritten the business playbook through legal exclusivity and strategic enforcement. The following case studies are lasting examples of how a strong patent portfolio can drive massive revenue.

What Do the Top-Earning Patents Have in Common?

From Bell’s telephone to Pfizer’s Lipitor, these IP giants share a few critical traits:

  1. They solved a widespread, unmet need — whether it was communicating across distance or lowering cholesterol.
  2. They created either a monopoly or an industry toll gate — locking out competitors or forcing licensing.
  3. They used litigation or licensing strategically — asserting their rights early, often, and aggressively.

Let’s explore some top examples and extract a few lessons.

Xerox’s Copy Machine Monopoly – $150M

Chester Carlson’s xerography patent birthed the plain-paper copier—and turned Xerox into a corporate juggernaut. Through the 1960s and 70s, Xerox’s patents blocked competitors like IBM from entering the market, allowing Xerox to charge premium prices. By the late 1960s, Carlson’s inventions had earned him over $150 million in royalties and share value.

Takeaway: A well-structured licensing strategy (paired with tight IP control) can produce a massive income stream.

Cohen-Boyer’s Recombinant DNA Patent – Licensing at Scale – $225M

Stanford and UCSF’s recombinant DNA patent generated $255 million—not by exclusion, but via low-cost, widespread licensing to 468 biotech companies. This approach seeded a trillion-dollar industry and showcased the power of platform IP.

Takeaway: Non-exclusive licensing can drive adoption and value—especially when the goal is market seeding as opposed to monopoly.

Bell’s Telephone Patent – The First Billion-Dollar Idea – $5B

Sometimes referred to as “the most lucrative patent ever issued in U.S. history,”?Alexander Graham Bell’s patent for the telephone (U.S. Pat. No. 174,465) did more than protect a product—it enabled Bell Telephone Company (later AT&T) to dominate an entirely new industry. During the patent’s life (1877–1894), Bell’s company enforced its rights in over 600 lawsuits—never losing once. The result? A de facto nationwide monopoly and profits equivalent to billions of dollars in today’s money.

Takeaway: Early enforcement with top-tier litigators, paired with clearly drafted patent claims, can cement your dominance in a fast-moving field.

Qualcomm’s Wireless Patents – Toll Collector for the Mobile Age – $100B

Rather than build all the tech itself, Qualcomm licensed its CDMA and later 4G/5G patents to phone makers worldwide. These standard-essential patents brought in over $8 billion in royalties in just one year. Qualcomm’s success came from getting the right patents at the right time, embedding patented tech in global mobile standards.

Takeaway: Standard-essential patents demand nuanced legal strategies—think reasonable royalty rates, global enforcement, and multi-party licensing.

Lipitor & Humira – The Gold Standard of Pharma Patents – $130B

Pfizer’s Lipitor ($130B in lifetime sales) and AbbVie’s Humira ($200B+) show how one blockbuster drug, paired with patent protection, can dominate global healthcare markets. Especially in Humira’s case, patent thickets extended exclusivity far beyond a single claim.

Takeaway: For life sciences clients, build an impenetrable wall with multiple layers of patents covering: product composition, use, formulation, manufacturing—everything. Layered patents = longer exclusivity = bigger returns.

Final Thoughts 

Whether you think you are in the IP business or not, you are in the IP business. The takeaway is clear: Patents are business weapons. Whether you are on the giving end of those weapons or eventually on the receiving side is up to you. When paired with sound legal strategy, patents don’t just protect innovation—they monetize it, often for decades.

So ask yourself:

  • Is your IP foundational enough to demand licensing?
  • Are you prepared to litigate (or threaten to)?
  • Is your IP portfolio protection strategy layered for longevity?
  • Are you monetizing globally?

Understanding the playbook of top-earning patents will help you position your company not just for protection—but for maximum commercial leverage.

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April 1, 2025

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Can Artificial Intelligence Save the Patent Office?

Brett Trout

The United States Patent and Trademark Office (USPTO) is at a crossroads. With a growing backlog of nearly 830,000 some odd unexamined patent applications, increasing wait times, and workforce challenges due to return-to-office mandates and hiring freezes, the agency finds itself under significant pressure. Some experts are looking to Artificial Intelligence (AI) as a potential solution to modernize the system and improve efficiency. But will AI be enough to save the USPTO from its mounting challenges?

The Current Crisis at the USPTO

For years, the USPTO has struggled to keep up with patent filings. Companies looking to secure patent protection now face a record average wait time of 30 months, with that number expected to grow due to staffing shortages. Recent policy changes, including the return-to-office mandate for federal employees and a hiring freeze, have only worsened the situation. Many experienced patent examiners have opted for early retirement or a resignation bonus rather than returning to in-person work, further reducing the agency’s capacity.

In an effort to modernize and streamline operations, the USPTO has turned to Artificial Intelligence. Could AI be the key to solving these deep-rooted issues?

How AI Can Help

AI has the potential to significantly improve the patent examination process in several ways:

1. Automated Prior Art Search

  • AI can quickly scan global databases to find relevant prior art, helping examiners assess patentability more efficiently.
  • This could reduce the time spent on manual searches and improve the accuracy of patent reviews.

2. Enhanced Application Review

  • AI-driven tools can analyze patent application claim language to flag potential inconsistencies or ambiguities.
  • This may help examiners issue office actions more quickly, speeding up the overall process.

3. Predictive Analytics

  • Although somewhat controversial, AI can identify patterns in patent filings and predict which applications are likely to face particular issues, allowing for proactive examination strategies.
  • This would improve efficiency and reduce unnecessary back-and-forth between examiners and applicants.

4. Machine Learning for Examiner Support

  • AI can assist junior examiners by providing real-time suggestions based on previous patent decisions and case law.
  • This might help newer examiners work more effectively and maintain consistency in patent approvals.

Challenges of Implementing AI at the USPTO

While AI holds great promise, there are significant challenges to integrating it into the patent examination process:

  • Lack of Infrastructure – The USPTO’s existing technology infrastructure may not be advanced enough to fully support AI-driven examination tools.
  • Human Oversight Still Required – AI can assist, but it cannot replace human examiners, especially in complex cases that require legal interpretation and judgment.
  • Training and Adoption – Examiners need proper training to use AI tools effectively, and resistance to change could slow adoption.
  • Ethical and Legal Concerns – AI algorithms must be transparent and unbiased to ensure that all patent applications are treated fairly and equitably.

Will AI Be Enough?

While AI has the ability to enhance efficiency and reduce some bottlenecks, it is not a magic solution. The USPTO must also focus on retaining and hiring skilled examiners, improving training programs, and developing a balanced approach that combines AI with human expertise.

Moreover, AI implementation takes time. Developing, testing, and integrating AI tools into the patent system could take several years, meaning it is not an immediate fix for the current backlog crisis.

Final Thoughts

AI has the potential to revolutionize the USPTO, making patent examination faster and more accurate. However, AI alone cannot solve all of the agency’s problems. A comprehensive strategy that includes policy changes, workforce retention efforts, and technology upgrades will be necessary to modernize the patent office.

So the real question is not just “Can AI save the USPTO?” but rather “How can AI and human expertise work together to build a more efficient, fair, and effective patent system?”

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March 19, 2025

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Proposed Legislation in Iowa Could Tip the Scales Against Small Tech Firms

Brett Trout

The Chair of Iowa’s Committee on Economic Growth and Technology has just introduced a new Iowa House Study Bill 294 that, if passed, would require the disclosure of the use of Artificial Intelligence (AI) in the preparation of election-related materials and would ostensibly prohibit the use of AI to discriminate against individuals.  

Overview

Iowa House Study Bill 294 addresses the use and regulation of artificial intelligence (AI), particularly in election-related materials and protections against “algorithmic discrimination” in AI systems. The bill also outlines enforcement mechanisms and penalties.

Key Provisions

1. AI-Generated Election Materials (Division I)

  • Any published AI-generated content advocating for/against candidates or ballot measures must contain a disclosure stating:
    “This material was generated using artificial intelligence.”
  • The Iowa Ethics and Campaign Disclosure Board is responsible for rule implementation.
  • Willful violations of this requirement is classified as a serious misdemeanor, punishable by up to one year in jail and fines ranging from $430 to $2,560.

2. Regulation of High-Risk AI (Division II)

Definitions

  • Algorithmic Discrimination: Unfavorable treatment based on an individual or group of individuals’ actual or perceived age, race, creed, color, sex, sexual orientation, national origin, religion, or disability.
  • Consequential decision: any decision that has a material legal or similarly significant effect on the provision or denial of a pardon, parole, probation, or release; an education enrollment or educational opportunity; employment; a financial or lending service; an essential government service; a health care service; insurance; or a legal service.
  • High-Risk AI Systems: AI systems that significantly impact legal, financial, employment, education, healthcare, insurance, or government services.
  • Developers: Entities creating or significantly modifying high-risk AI systems.
  • Deployers: Entities using high-risk AI systems in Iowa.

For developers, the proposed bill:

  • Requires reasonable care to protect individuals from known or reasonably foreseeable risks of AI discrimination.
  • Creates a rebuttable presumption that a developer used reasonable care if the developer complies with the detailed requirements detailed in the bill and by the Attorney General.
  • Requires providing AI discrimination risk documentation to a deployer or other developer using the AI and to publish a statement on their website detailing how the developer manages risks of AI discrimination 
  • Requires disclosure of risks of AI discrimination to the Attorney General 

For deployers, the proposed bill:

  • Requires the use of reasonable care to protect individuals from risks of AI discrimination. 
  • Requires completion of an AI impact assessment.
  • Requires an annual review of the AI for discrimination. 
  • Requires disclosure that individuals are interacting with AI.

3. Enforcement & Penalties

  • Iowa Attorney General has exclusive enforcement authority.
  • Before taking legal action, the Attorney General must issue a notice of violation and allow 90 days for correction.
  • Violations are considered unlawful practices under Iowa law and can result in civil penalties up to $40,000 per violation, injunction, disgorgement of money, etc.
  • No private right of action is granted—only government enforcement is permitted.

4. Exemptions & Exclusions

  • Complying with the law or legal system inquiry
  • Acting under the authority of a federal agency
  • Research and testing AI before deployment.
  • AI used only for Cybersecurity, antivirus, or fraud detection technologies 
  • Developers do not have to disclose trade secrets.

Conclusion

While better election materials and preventing AI discrimination are laudable goals, the question remains whether this vague, yet complex regulatory framework is the proper vehicle to accomplish those goals. If this proposal simply burdens smaller cutting-edge tech companies with crippling regulations it may do more harm than good. Without evidence they will achieve their intended goals, these regulations will act as nothing more than another artificial barrier to entry, favoring establishment players over smaller, more nimble tech companies who simply do not have the excess capital to absorb a mountain of additional, potentially ineffective, bureaucratic red tape. 

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By Brett Trout
March 14, 2025

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Nike vs. Lululemon: The Battle Over Flyknit Technology

Brett Trout

Nike’s reputation as an industry leader in athletic footwear is built on a foundation of innovation and aggressive protection of its intellectual property. With the global sneaker market approaching annual sales of $100B, the stakes are high and getting higher. In its latest legal battle, Nike sued Lululemon, alleging that the company’s Chargefeel, Strongfeel, and Blissfeel shoes infringe on its patented Flyknit technology. Although the case was just settled, this lawsuit was not Nike’s first foray into patent infringement litigation—nor is it likely to be its last.

What is Flyknit Technology?

Nike’s Flyknit technology revolutionized the sneaker industry when it debuted in 2012 with the Flyknit Racer. Unlike traditional sneaker uppers, which were made by stitching together multiple materials, Flyknit uses a seamless, lightweight construction that reduces waste by up to 60%. Flyknit integrates many thin high-strength fibers like Vectran into a single strand that is then strategically woven into a fabric to maximize strength and support where it’s needed while keeping the shoe ultra-light.

Nike’s proprietary Flyknit method allows for precise engineering of textile elements, tailoring support, flexibility, and breathability to each shoe’s specific design. The result? A sneaker that “fits like a sock” while maintaining structure and durability. Since its creation, Nike has obtained hundreds of patents covering its Flyknit technology. 

Nike vs. Lululemon: The Lawsuit

Nike filed its lawsuit against Lululemon in January 2023, claiming that Lululemon’s Blissfeel, Chargefeel Mid, Chargefeel Low, and Strongfeel shoes incorporate elements of Nike’s Flyknit patents without permission. The three Nike patents in question include:

  1. U.S. Patent 8,266,749 – Covers a method of manufacturing a textile element with different knitted textures, allowing for structure and support in key areas of the shoe.
  2. U.S. Patent 9,375,046 – Describes a knitted textile with webbed areas and tubular structures, providing stretch and flexibility.
  3. U.S. Patent 9,730,484 – Details a flat-knitted upper with a three-dimensional domed structure, designed to conform to the foot for an optimal fit.

In its lawsuit, Nike sought both damages and a permanent injunction to stop Lululemon from producing the allegedly infringing designs.

Lululemon’s Response

Lululemon denied Nike’s allegations, stating that its sneaker designs were independently developed. The company maintained that the lawsuit would not impact its footwear business and signaled its intention to fight the claims from the beginning.

This legal battle is significant because Lululemon only recently entered the sneaker market in 2022. The Blissfeel, Chargefeel, and Strongfeel models were a bold move into the competitive world of athletic footwear, which is dominated by brands like Nike and Adidas. Lululemon’s unexpected success may have played a role in Nike’s decision to take legal action.

Nike’s History of Defending Its Patents

Nike is no stranger to intellectual property lawsuits. The sportswear giant has sued multiple competitors over its Flyknit technology, including:

  • Adidas (2021) – Nike accused Adidas’ Primeknit shoes of infringing on Flyknit patents. The case was settled in 2022.
  • Skechers (2016) – Nike took Skechers to court for allegedly infringing eight Nike patents, including patents covering the Flyknit technology. The lawsuit was settled in 2021.
  • Puma (2018) – Another legal battle over Flyknit-type shoe designs.

Nike’s enforcement of its intellectual property is not limited to Flyknit or even just patents. Nike sued, and successfully settled with, Japanese streetwear brand A Bathing Ape (BAPE) in January 2023 for allegedly copying the Air Force 1, Air Jordan 1, and Dunk silhouettes alleging trademark infringement, dilution, and unfair competition.

Nike’s aggressive legal strategy has served as both a protective measure and a competitive tactic to maintain its dominance in the athletic footwear market.

The Verdict and Its Impact on the Industry

In this case, a federal jury awarded Nike $1.20 per unit for a total of $355,450 in damages, finding Lululemon had infringed Nike’s 8,266,749 patent. While this amount is likely much smaller than Nike spent to bring this case to trial, the judgment will likely result in an injunction and reinforce Nike’s position as a leader in sneaker innovation. The judgment also signals to competitors that Nike will aggressively defend its intellectual property, regardless of the cost or the lack of patent infringement damages.

What This Means for Lululemon

Lululemon has indicated that it will appeal the decision. The company remains committed to its expansion into footwear, despite this setback. While a financial penalty of $355K is not much more than a rounding error for a company of Lululemon’s size, an accompanying injunction could have long-term implications for its sneaker business. If, as seems likely, Nike succeeds in obtaining its requested injunction, Lululemon may be forced to alter its designs or secure licensing agreements.

What This Means for YouThis lawsuit highlights the growing importance of patent protection in growing markets. As companies compete to develop more innovative products and services, legal battles over intellectual property will continue. And as companies continue to encroach on each other’s market shares, generating a comprehensive intellectual property portfolio will remain instrumental in defining and protecting your respective market share. 

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By Brett Trout
March 11, 2025

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Found Another One: Court Sanctions Both Local and Lead Counsel for AI-Generated Case Citations 

Brett Trout

The legal profession is undergoing a digital transformation, with artificial intelligence (AI) playing an increasingly prominent role in legal research and document drafting. Some states even require attorneys to stay abreast of technological advancements, such as AI, in the legal field. For example, the Iowa Rules of Professional Conduct state: 

“To maintain the requisite knowledge and skill, a lawyer should keep abreast of changes in the law and its practice, including the benefits and risks associated with relevant technology, engage in continuing study and education, and comply with all continuing legal education requirements to which the lawyer is subject.” Iowa R. Prof. Cond. 32:1:1 Comment [8]

Despite this mandate, many attorneys are understandably wary of incorporating advanced technology, especially artificial intelligence (AI) into their legal practice. While AI promises efficiency and cost savings, a recent case in the United States District Court for the District of Wyoming serves as a stark reminder of the dangers of including unverified AI-generated content in court filings.

The Motion That Raised Alarms

In Wadsworth v. Walmart Inc. & Jetson Electric Bikes, LLC, attorneys for the plaintiffs filed a motion in limine that cited nine cases. The court discovered that eight of those cases did not exist. Upon investigation, the attorney who prepared the motion, Rudwin Ayala, of the country’s largest personal injury firm, Morgan & Morgan, indicated that he had drafted the motion. Mr. Ayala had uploaded the motion onto “MX2.law” to add supporting case law. This website is apparently an in-house database launched by Mr. Ayala and his firm. Mr. Ayala stated this was the first time he had ever used AI in this manner. 

Unbeknownst to Mr. Ayala the AI system had fabricated the case citations. Without verifying the accuracy of the AI-generated case citations, he added them to his motion that was then filed with the court along with signatures of two other attorneys for the plaintiffs. Mr. Ayala does not appear to have learned that the cases were non-existent until the court identified the questionable cases and issued an order to show cause demanding the attorneys and law firms involved produce the cited cases or face sanctions. 

Upon investigation, the attorneys and law firms admitted that the citations were AI-generated hallucinations—false information produced by AI—resulting in the court imposing disciplinary actions on all of the attorneys involved.

What Are AI Hallucinations?

AI hallucinations occur when an AI model generates information that appears credible but is entirely fictitious. In the legal field, this can manifest as fabricated case law, incorrect citations, or misleading summaries of legal principles. AI systems, including chat-based platforms and proprietary legal tools, generate responses based on patterns in their training data rather than real-world verification. If unchecked, these hallucinations can mislead attorneys, courts, and clients, potentially resulting in legal errors and ethical violations.

The Court’s Response

In deciding not to sanction the law firms involved, the court took into consideration that the law firms had taken several remedial steps to identify the problem and implementing firm-wide policies to prevent such issues arising in the future, including:

•?Promptly withdrawing the Motion in Limine;

•?Being honest and forthcoming about the use of AI in generating the case citations;

•?Paying opposing counsels’ fees for defending the Motion in Limine; and

•?Implementing policies, safeguards, and training to prevent another occurrence in the future (and providing proof to the court of such measures).

Despite these remedial steps, transparency, and apologetic sentiments, the court found that all three attorneys whose signatures appeared on the motion, had violated Fed. R. Civ. P. 11(b), meriting sanctions for their involvement in filing. These sanctions included: 

  1. Mr. Ayala – revocation of his pro hac vice status and a $3.000 fine. Aggravating factors included: 1) Mr. Ayala was the attorney who used the AI-platform to generate the case citations and include them in the motion; 2) the number of hallucinated cases in the filing compared to real cases; 3) Mr. Ayala’s apparent access to legal research resources; and (4) the fact that attorneys have been on notice of generative AI’s issues in hallucinating cases for quite some time. A mitigating factor warranting a less severe punishment was Mr. Ayala’s honesty and candor with the court when confronted with the fake citations.
  2. Timothy Michael Morgan, Pro Hac Vice, Morgan and Morgan – $1,000 fine. Although Mr. Morgan was apparently not provided with a copy of the motion prior to filing, and had not read the motion, he did affix his e-signature to the bottom of the Motion in Limine. 
  3. Taly Goody, Goody Law Group, Palos Verdes Estates, CA, – $1,000 fine. Although Ms. Goody was apparently not provided with a copy of the motion prior to filing, she did affix her e-signature to the bottom of the Motion in Limine. Although she was technically local counsel, the court noted that this was Ms. Goody’s first and only appearance for a case in the District of Wyoming.

The court noted that although it appeared that Mr. Morgan and Ms. Goody relied on Mr. Ayala’s reputation and experience to comply with his Rule 11 obligations, that factor was inconsequential in determining whether a violation occurred.

These sanctions highlight the legal system’s intolerance for inaccuracies stemming from AI misuse and underscore the ongoing ethical obligations of attorneys to not only be familiar with burgeoning technology, but to use it in a manner consistent with the rules governing civil procedure and professional conduct.

Lessons for Attorneys Using AI in Legal Research

For legal professionals, this case serves as a critical reminder:

  • Always Verify AI-Generated Citations – Treat AI as a research aid, not an infallible authority. Verify all statutes and case citations.
  • Understand the Limits of AI – AI-generated content should never replace human expertise and professional judgment. As the subject matter experts, lawyers are the last line of defense, ensuring that all court filings under their names are based on real, verifiable sources.
  • Take Responsibility for Legal Filings – Whether they write them or not, attorneys who sign court documents are personally responsible for their accuracy. Blindly relying on AI or lead counsel representations can lead to ethical breaches and professional discipline.
  • Adopt AI Safeguards in Law Firms – Implement law firm policies that require verification of AI-generated legal research before submission to the court.
  • Local Counsel is Liable – Just because a reputable attorney from a reputable firm represents that a court filing is accurate, attorneys have a legal and ethical duty to confirm that every document submitted to the court under their name is truthful and that all case citations are real and stand for the premise asserted. 

The Future of AI in Law

AI is a powerful tool that is becoming ubiquitous for its power to provide clients with better, faster, and cheaper legal services. Given the usefulness of AI and state requirements that attorneys be technologically adept, attorneys cannot hide their heads in the sand and simply ignore AI. Indeed, it may not be long before courts start sanctioning attorney’s for failing to understand the uses and limitations of AI in the practice of law. 

Attorneys need to understand that AI is no substitute for diligence and professional responsibility. They must balance technological innovation with ethical standards to prevent the misuse of AI-generated information. As courts continue to scrutinize AI’s role in legal proceedings, attorneys must adapt by educating themselves, integrating AI responsibly, and vigorously validating AI output.

This case is yet another AI wake-up call for the legal profession: the future of AI-assisted law is promising, but attorneys must approach this future armed with ongoing education and a commitment to the integrity of the profession. 

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Tech Firms Scramble to Secure Patents in the Exploding Market for Wearable Tech

Brett Trout

The wearable technology industry is experiencing a patent gold rush, as companies race to secure intellectual property rights in an increasingly competitive market. According to the newly released IoMT Wearable Devices Patent Landscape Report and Forecast 2024-2032, the Internet of Medical Things (IoMT) sector is projected to grow from $34.93 billion in 2023 to a staggering $225.1 billion by 2032. In response to this unprecedented growth, tech firms are aggressively filing patents to protect their innovations in wearable sensor technology, AI integration, and connectivity solutions?.

The Patent Boom in IoMT Wearables

Wearable medical devices—ranging from smartwatches and fitness trackers to clinical-grade health monitors—are evolving rapidly. Innovations in miniaturized sensors, AI-powered diagnostics, and real-time data transmission are driving this surge in patent activity. Leading companies such as Veniam Inc. and Abiomed Inc. are investing heavily in connectivity solutions and pain management using neuromodulation technologies?.

Patent Hotspots: U.S., Europe, and Asia

The patent race is unfolding across multiple regions, each with its own strengths:

  • United States: Leads with over 600 patents, fueled by robust research funding and AI-driven health monitoring innovations.
  • Europe: Holds around 500 patents, focusing on non-invasive monitoring and connectivity solutions.
  • Asia (China & Japan): Close behind with 450 patents, emphasizing cost-effective manufacturing and novel health monitoring applications?.

AI Integration: The Next Frontier in Wearable Tech

AI and machine learning algorithms are becoming a core focus for patent filings. These technologies enable predictive health monitoring and real-time diagnostics, making wearable devices smarter and more intuitive. From AI-powered motion trackers to smart rings capable of differentiating between object and body temperatures, the next generation of wearables is already taking shape?.

Samsung’s Next-Gen Galaxy Ring

Samsung is one of the latest players securing patents for a next-generation smart ring. The Galaxy Ring 2 is rumored to feature new motion sensors, temperature detection for objects and users, and possible haptic feedback for alerts. While not all patent application translate into commercial products, this flurry of patent application filings suggests that the wearable tech landscape is staged for a considerable leap forward?.

Corporate Takeovers and Patent Wars

The fight for patents isn’t just happening in research labs—it’s also playing out in boardrooms. HP’s recent acquisition of Humane, a wearable AI startup, is a prime example. Once valued at $850 million, Humane collapsed after poor product reviews and was acquired for just $116 million. However, HP sidestepped purchasing the failed devices—opting instead to secure the patents, software, and AI talent. This highlights a growing trend: companies are increasingly acquiring and valuing intellectual property over products?.

The Future of Wearable Tech Patents

As AI-powered health monitoring, gesture control, and smart accessories become more sophisticated, expect an even fiercer battle for patents. Companies that secure early intellectual property rights will dictate the direction of next-gen wearables, shaping healthcare, fitness, and extended reality (XR) applications.

For startups and tech giants alike, one thing is clear: if you’re not filing patents, you’re falling behind.

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March 4, 2025

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Judge Bibas Lays Down the Law on When AI Training Constitutes Copyright Infringement 

Brett Trout

In a significant decision for copyright law and legal technology, Judge Stephanos Bibas granted partial summary judgment in favor of Thomson Reuters, rejecting ROSS Intelligence’s fair use defense in a closely watched lawsuit over the use of Westlaw’s legal content. The ruling underscores the growing tension between traditional legal research providers and emerging AI-driven legal tools.

Background: The Battle Between Westlaw and ROSS

Thomson Reuters, the owner of Westlaw, sued ROSS Intelligence, an AI-powered legal research startup, alleging copyright infringement. At the heart of the dispute was ROSS’s use of Westlaw’s headnotes—editorial summaries of case law—to train its AI-driven legal search tool.

When ROSS initially sought a license for Westlaw’s content and was denied, it turned to a third-party legal research service, LegalEase, to create training data. LegalEase, in turn, instructed lawyers to develop legal questions using Westlaw headnotes as reference material. ROSS used this lawyer-generated data—comprising roughly 25,000 “Bulk Memos”—to train its AI. Thomson Reuters argued that this amounted to copying protected content, leading to the lawsuit.

Key Takeaways from the Ruling

  1. Copyright Validity Affirmed
    Acknowledging that the text of judicial opinions themselves are not copyrightable, Judge Bibas ruled each of Westlaw’s headnotes and Key Number System are sufficiently original to be protected by copyright. He likened their creation to sculpting—removing unnecessary content to distill key legal principles, a process that involves sufficient creativity to warrant protection. He found that each headnote, even those that quoted judicial opinions verbatim, had original value as individual copyrightable works.
  2. Direct Copyright Infringement Found
    The court held that ROSS directly copied 2,243 Westlaw headnotes. By analyzing the substantial similarity between Westlaw’s headnotes and ROSS’s AI training data, Judge Bibas determined that ROSS had engaged in impermissible copying, not independent summarization of judicial opinions.
  3. Fair Use Defense Rejected
    ROSS’s fair use argument was a major focal point in this case. Judge Bibas ruled against ROSS on two of the four fair use factors:
    • Purpose and Character of Use: ROSS’s use was commercial and not transformative. While ROSS claimed it was using headnotes to train an AI, the judge ruled that its AI performed a similar function to Westlaw—assisting with legal research—rather than creating something new.
    • Nature of the Work: This factor slightly favored ROSS, as Westlaw’s headnotes are not highly creative. However, the judge noted that this factor is rarely decisive in fair use cases.
    • Amount and Substantiality of Use: ROSS did not incorporate Westlaw headnotes into its final product but still relied heavily on them for AI training. While this factor also favored ROSS, the judge concluded that the first and fourth factors were far more important.
    • Market Impact: For this most important of all of the factors, the judge emphasized that ROSS’s AI directly competed with Westlaw, harming Thomson Reuters’s market and potential licensing opportunities.
  4. Broader Implications for AI and Copyright
    The ruling reinforces the idea that AI companies cannot freely use copyrighted material for training without a license, even if the content does not appear in the final product. This could have significant implications for AI companies in legal tech and beyond, as courts increasingly scrutinize how copyrighted works are used in AI training.

What’s Next?

While ROSS may still appeal, this decision gives some current indication of how courts intend to examine the issue of copyright infringement in the AI training process. It also serves as a guide to direct AI developers as to how they should approach source training data to avoid claims of copyright infringement.

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March 3, 2025

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When AI Turns Against You: The Devastating Fallout of a Single Download

Brett Trout

Artificial intelligence (AI) has revolutionized industries and transformed the way we interact with technology. From image generation to automation, AI tools promise efficiency and innovation. However, as one former Disney engineer learned the hard way, the rapid advancements in AI also come with unforeseen dangers.

A Download That Changed Everything

Matthew Van Andel, a 42-year-old engineer, had no reason to suspect that a simple AI tool he downloaded from GitHub would lead to the complete unraveling of his career, finances, and personal life. Looking for a way to generate AI images from text, he installed a free software tool on his home computer in February. Unbeknownst to him, this seemingly helpful software contained hidden malware, allowing hackers to infiltrate his digital life.

Months after the infiltration Van Andel received a chilling message on Discord: “I have gained access to certain sensitive information related to your personal and professional life.” The hacker not only had control over his personal and work data but also seemed to know intimate details about his conversations with colleagues.

A Catastrophic Data Breach

Rather than complying with the hacker’s demands, Van Andel immediately reported the incident to the authorities. Unfortunately, the damage had already been done. The following day, the hacker leaked over 44 million Disney messages online, exposing private customer information, employee passport numbers, and confidential corporate financial data.

The hacker, who went by the alias “Nullbulge,” claimed to be part of a Russia-based hacktivist group opposing AI use in creative industries. However, cybersecurity researchers believe the individual was likely an American operating alone, seeking money through extortion.

A Downward Spiral

For Van Andel, the fallout from the hack was swift and severe. The hacker had gained access to his financial accounts, stolen his credit card information, and even compromised his home security system. His children’s online gaming accounts were hacked, and his personal social media accounts were flooded with offensive messages.

To make matters worse, Disney terminated Van Andel’s employment after a forensic analysis of his work computer revealed it had been used to access pornography. Van Andel has vehemently denied this claim. With his health insurance cut off and approximately $200,000 in lost bonuses, Van Andel found himself in financial ruin. His family launched a GoFundMe campaign to support him, highlighting the devastating impact of cybercrime on his life.

A Cautionary Tale

Van Andel’s experience underscores the risks associated with AI technology and cybersecurity vulnerabilities. As AI tools become more accessible, malicious actors will continue to exploit unsuspecting users, leading to potentially catastrophic consequences. This case serves as a stark reminder that AI’s dark side can emerge when you do not prioritize online security, both at work and at home.

Key Takeaways:

  • Hackers exploit AI tools, especially those sourced from open platforms, to infiltrate personal and professional data.
  • Cyber threats are evolving alongside AI, making robust cybersecurity measures more critical than ever.
  • Employers and individuals alike must exercise extreme caution when downloading and implementing applications, AI-driven or otherwise.

While AI has the power to revolutionize industries, Van Andel’s story is a sobering reminder that with great technological advancement comes great responsibility. It is therefore doubly important to remain vigilant and proactive in securing both your digital private and professional lives to avoid falling victim to the dark side of AI.

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