J. Andrew McKinney & Associates, LLC

09/03/2026

More AI adventures in IP…the 5th circuit just refused to amend a defendant’s motion to add prior art references uncovered using an AI patent search app.
In Pacem IP Holdings, LLC v. Maxim Lighting International, Inc., the district court denied Maxim’s motion, ruling that the availability of a new search tool does not excuse a party from explaining why it could not have found the alleged prior art earlier through reasonable diligence.
In a backhanded way, this may be an endorsement for using AI patent search tools early and often, because the real issue was whether the defendant did a diligent search before the filing their pleadings, since the newly (AI) discovered references could have been found and filed as part of their timely filed invalidity argument. The court didn’t care that the AI tool didn’t exist when Maxim’s pleadings were due.
The AI search tool in question was created by PatentVest, Inc., but Maxim alleged it wasn’t available until May 2026. Maxim ran searches on May 18 and 19, and PatentVest returned fourteen candidate references on May 26 and 27, including a 2012 U.S. patent application publication by Fiene and a 2010 Canadian patent by Su. Maxim identified the Fiene and Su prior art references as “potentially highly material prior-art references requiring detailed analysis” on or around June 2, and then prepared supplemental claim charts, serving amended contentions on June 25, and then moved for leave to amend. Maxim’s motion was denied, because “[t]he critical issue is not when [the party seeking to amend] discovered [the] information, but rather, whether they could have discovered it earlier had it acted with the requisite diligence.” The Court continued: “Defendant does not explain why it could not have discovered the Fiene and Su patents with reasonable diligence prior to the April 13, 2026 deadline, notwithstanding the use of an AI tool.”
As a practical matter, AI tools are becoming increasingly easy to find and use, and many government entities provide access to them at no cost. See, e.g., WIPO’s online search page: https://patentscope.wipo.int/search/en/structuredSearch.jsf and pull down the “Search” tab to find the option for AI assistance. As always, we recommend that you carefully review anything found or generated with an AI tool and record when and how each AI tool was used. The legal consequences arising from using AI tools and filing AI generated materials is not what we’d call “well settled”, so we’ll keep watching this space.

This patent search tool allows you not only to search the PCT database of about 2 million International Applications but also the worldwide patent collections. This search facility features: flexible search syntax; automatic word stemming and relevance ranking; as well as graphical results.

02/25/2026

Heads Up!
There are many publicly available “generative AI” tools you can use for free, and when you use them, you agree to certain terms and conditions (e.g., AI tool provider boilerplate or click through fine print about privacy and copyright, etc.) No surprise there, right? What may surprise you is that if you send anything you generate that way to your own trusted attorney, it likely isn’t protected by attorney/client privilege because your privacy rights are affected in part by that AI tool provider’s boilerplate or click through fine print about privacy and copyright, etc. This is a rapidly evolving area of law, but a recently reported SDNY hearing on February 10, 2026 (written decision issued on February 17), Judge Jed S. Rakoff (of the Southern District of New York) held that when a defendant used a generative AI tool to prepare on his own draft documents and then sent to his attorney, those documents were not protected from discovery by the attorney-client privilege. That would be a nasty surprise, which could lead to some very uncomfortable depositions.

12/04/2025

We have an announcement; we’ve just moved to our new office space in Severna Park. It was time to shed some unneeded space (and expenses) so we’ve moved from our 2500+ sq. ft. Millersville suite to a much more convenient 600 sq. ft. suite. Our new physical address for the office is:
JA McKinney & Assoc., LLC
152 Downing Drive, Suite B
Severna Park, MD 21146

We’ve also upgraded our computers and software systems (because just moving the computers would be too easy) so we’re juggling a bit to get our workflow back to normal. In the meantime, please feel free to call or text me at 410-978-6160 if you have any questions or issues. Email addresses, text and telephone numbers (and other channels of communication) will remain unchanged, so feel free to email, text or call Darlene, Kit or myself if you need anything and we’ll continue working with you just as we’ve done since 2009 (and earlier, for many of you).
Cheers, all!
Andy

11/13/2025

If this melody and lyrics were written by AI, nobody can own copyright on publishing rights, because no human created those works.

[Intro] / Hm-hm-hm / [Verse 1] / Been beat down, but I don't stay low / Got mud on my jeans, still ready to go / Every scar's a story that I survived / I've been through hell, but

10/10/2025

The news in and around DC has become a bit chaotic lately, especially since another US Government Shutdown has begun.
Meanwhile, at the US Patent and Trademark Office, the Shutdown isn’t affecting operations. The headline banner on the Patent Office website (“www.uspto.gov”) reads as follows:
“At present, the USPTO will remain open and fully operational until further notice under operating reserves from the prior year’s fee collections.”
We’ll still working here, and will provide updates, as appropriate.

06/02/2025

Is “DABUS” an acronym that will eventually become a proper noun?
Can you Patent an AI Inventor (not invention, inventor)? YES, if you are a natural person.
Can your AI Inventor conceive of a patentable invention? NO.
DABUS (Device for the Autonomous Bootstrapping of Unified Sentience is an artificial intelligence (AI) system created by Stephen I. Thaler of St. Charles, Missouri.
DABUS (the AI system) is a patented AI paradigm capable of accommodating trillions of computational neurons within artificial neural systems that allegedly emulate the limbo-thalamic-cortical loop within a mammal’s brain. Thaler was granted US Patents 11727251 and 12073313 and his DABUS AI system is also described in prior filed PCT application PCT/US15/10051 and published US application US2015/0379394.
DABUS utilizes arrays of trainable neural modules containing interrelated memories representative of some conceptual space or environment. Through learning rules, these modules bind together to represent both complex ideas (e.g., juxtapositional inventions) and their consequences as chaining topologies. An electro-optical attention window scans the entire array of neural modules in search of so-called “hot buttons,” those neural modules containing impactful memories. Detection of such hot buttons within consequence chains triggers the release or retraction of synaptic disturbances into the system, selectively reinforcing the most salient chain-based notions. The Thaler patents describe these processes within a “Thalamobot” which includes at least one “critic” (or recognition system) which evaluates sensed state changes and the environment to generate “discoveries” which are (a) to a greater or lesser extent “novel”, and (b) characterized as “penalties” or “rewards”, where a “learning rate” is increased in proportion to rewards. It seems DABUS “invents” by comparing design (state) changes and discovering maximized “rewards”, which does seem like a human thought process.
DABUS (as a named inventor) has allegedly conceived of two inventions and had patent applications filed in several countries, but none of those applications has been allowed…yet. This will be a story worth following.

11/21/2024

This just in…and I’m both relieved and a bit concerned…
https://www.wired.com/story/us-patent-trademark-office-internally-banned-generative-ai/
It’s disconcerting to learn that something written for you to read may not actually have been written by the human examiner responsible, who may instead have delegated that writing task to ChatGPT or some other AI tool.
Announcing that such tools are banned isn’t actually a warranty that you’re reading something written by a human examiner. If AI is used to draft a USPTO office action and errors slip through, applicants or their attorneys will still have to respond completely and in a timely manner. To be fair, I’ve learned recently that patent examiners will also encounter AI generated text from some applicants which can be simultaneously appear reasonable (on first read-through) and be wildly wrong on the facts or the law.
This might be the new normal for all of us.
Post Script: LinkedIn offered to help with this…”Try Writing with AI”
I do enjoy an ironic twist...

SCOOP: The agency dedicated to protecting new innovations prohibited almost all internal use of GenAI tools, though employees can still participate in controlled experiments.

08/30/2024

This just in from Texas: The Federal Trade Commission (“FTC”) recently passed rules to invalidate Noncompete Agreements across the US beginning next Wednesday (September 4th, 2024). But a group of business organizations has sued the FTC and (a) won a motion to enjoin (i.e., prevent) the FTC from enforcing the new rules and (b) won a motion for summary judgement by which the Court Set Aside the new rules, meaning the FTC cannot enforce those new rules (prohibiting Noncompete Agreements) in the future. The case name is Ryan LLC v. Federal Trade Commission and the Court’s order may be downloaded or read here:

05/06/2024

It's been a while since we've shared patents our clients have received. Here are a few more from the US Patent & TM Office.

04/25/2024

The FTC has just diminished Non-Compete Contracts as a risk management tool for those who employ inventors, authors, developers and other creators, which WILL make timely filing of patent applications a more urgent priority for employers. It’s now time to review Patent. Trade Secret and other Intellectual Property protection procedures to address new risks relating to employees who might depart before rights in IP created during employment are perfected. Please contact me if you’d like to discuss updated procedures.

A new rule from the US Federal Trade Commission invalidates most noncompete agreements, frequently used to bind tech workers. It could unlock higher wages and more entrepreneurship and innovation.