NEWS & UPDATES
Strategic commentary on patent prosecution, trade secrets, and navigating the evolving landscape of AI-assisted innovation.
Section 101: More Evidence—and More Flowcharts
If there is one thing the USPTO’s Alice/Mayo framework needed, surely it was more flowcharts. The September 29 guidance supplies two, along with recommendations for using Subject Matter Eligibility Declarations (SMEDs) to support a response to a Section 101 rejection. This week’s post offers a brief look at the guidance, how factual evidence can strengthen an eligibility argument, and what must be clear before that evidence can be meaningfully evaluated.
An Abdication of Duty: The Supreme Court Denies Certiorari in USAA v. PNC Bank
Earlier this week, the Supreme Court denied certiorari in USAA v. PNC Bank, permanently wiping out a $223 million infringement verdict and leaving the broken state of Section 101 intact. This post explores the impact and origins of the mess.
The Double-Duty Moat: How IP Strategy Unlocks R&D Tax Credits
Founders love R&D tax credits, but the IRS documentation requirements can be an administrative nightmare. This week, I explore how working with an IP attorney to secure your patents and trade secrets naturally generates the exact “contemporaneous proof” the IRS demands. Learn how to use a single strategic effort to build a legal moat and unlock non-dilutive capital.
Achieving More with Less: A 2026 Update on AI-Assisted Patent Strategy
A few months after launching our AI-assisted application service, the results are in: inventors are producing higher-quality provisional patent application content than ever before. By rewarding client "sweat equity" with a unique fee structure, we are enabling more aggressive filing strategies that fit within existing budgets. This week, I discuss how this "Inventor-in-the-loop" approach is redefining a core value proposition of modern patent prosecution.
USAA v. PNC Bank and the Definition of the Abstract Idea
The USAA v. PNC Bank petition for certiorari brings the Section 101 “abstract idea” exception back to the Supreme Court, highlighting the logical tension in labeling processes involving tangible objects as abstract. This post explores the fundamental difficulty of distinguishing between abstract concepts and their physical applications when every idea is, by its very nature, abstract.
Federal Circuit Update: The High Cost of Vague Trade Secret Identification
In the era of high-speed innovation, Intellectual Property Conservation is about clarity, not volume. Following a new ruling from the Federal Circuit, we examine the “Identification Trap” that causes even the most technical “secret sauce” to lose legal protection. Learn how to define your moat before the audit begins and why a single, precisely identified secret is worth more than a thousand unexplained exhibits.
A New Partnership Focused on Trade Secret Litigation Financing
Congratulations to Tangibly and SIM IP on their new partnership! This piece takes a look at what this could mean for companies that generate intellectual property and take protecting it seriously.
Esplin & Associates Obtains Positive Result in Federal Circuit Appeal
Better late than never - Finally after an appeal to the Federal Circuit is initiated, the USPTO acknowledges improprieties in a PTAB decision.
IAM Strategy 300, Again
Congratulations to Ben on this remarkable achievement! His dedication and vision inspire our team and clients alike, and we are excited to see the continued impact of his work in the world of IP strategy.
Inventor Thank You Packages
For patent attorneys, inventors make the world go around. Without their creativity, insight, skill, and ingenuity we would have to find a different way to feed ourselves. Our firm, very recently, began sending out Thank You Packages to inventors of patents we have obtained for clients.
Berkeley SkyDeck Demo Day
Berkeley SkyDeck Demo Day is a chance for SkyDeck's current batch of startups to present to inventors. Ben Esplin will be attending the upcoming event as an advisor for the UC Berkeley SkyDeck Accelerator program.
IAM Strategy 300
We're thrilled to announce that Ben Esplin, the founder and president of Esplin & Associates, has been recognized as one of the IAM Strategy 300.
Patent Protection for Computer-Implemented Innovation
While computer-implemented innovations sometimes face fierce resistance at the USPTO, Esplin & Associates celebrates the recent grant of two software-based patents, both allowed without any rejections.
Esplin & Associates Launches AI-Powered Patent Preparation
Esplin & Associates is proud to introduce its AI-powered patent preparation service, offering a cutting-edge solution that enhances efficiency while maintaining the highest legal standards. This innovative service combines advanced AI tools with the firm's legal expertise, enabling tech companies to streamline their patent drafting process and gain a competitive edge in protecting intellectual property.
The Untapped Power of AI-Generated Patent Applications in Standards Essential Patents
Standards Essential Patents (SEPs) are vital in industries like telecommunications and consumer electronics, where companies race to secure patents essential to industry standards. The traditional patent drafting process can be slow and costly, creating a bottleneck in filing SEPs. However, AI-generated patent applications offer a solution by accelerating the drafting process, reducing costs, and increasing scalability. This technology enables companies to file patents quickly and efficiently, providing a competitive edge in the fast-moving world of standards. AI’s speed and precision make it a game-changer for building SEP portfolios.
Patexia Ranking 2023
A recent article available at Patexia.com highlighted our position (10th) in their rankings of law firm overall performance for patent application preparation and prosecution in 2023. We are proud that our firm has ranked in the top ten for overall performance every year we have been eligible, since our founding in 2019.