- within Consumer Protection and Real Estate and Construction topic(s)
Patent Invalidity Due to Incorrect Inventorship
Inventorship is an often overlooked detail in patent law that is a statutory condition tied to validity, ownership, standing, and enforceability. The Federal Circuit’s recent decision in Fortress Iron, LP v. Digger Specialties, Inc., 171 F.4th 1310 (Fed. Cir. 2026), makes that point sharply: where a patent omits a true inventor and the error cannot be corrected under 35 U.S.C. § 256, the patent is invalid.
In Fortress, the patents initially named only Fortress’s owner and an employee as inventors. Fortress later acknowledged that two vendor-side employees, Alfonso Lin and Hua-Ping Huang, were coinventors. Although Fortress added Lin through the PTO process, it could not locate Huang and sought court-ordered correction under Section 256(b). The Federal Circuit affirmed summary judgment of invalidity because Huang was an omitted coinventor and Fortress could not satisfy Section 256(b)’s notice-and-hearing requirement.
Splicing Patent Eligibility: The Federal Circuit Restores § 101 Eligibility for Engineered Cells in 'REGENXBIO v. Sarepta'
In REGENXBIO Inc. v. Sarepta Therapeutics, Inc., the U.S. Court of Appeals for the Federal Circuit reversed a summary judgment ruling from the U.S. District Court for the District of Delaware that had invalidated patent claims directed to engineered host cells under 35 U.S.C. §101. 167 F.4th 1206 (Fed. Cir. 2026). In reversing the district court, the Federal Circuit concluded that cells engineered to incorporate a recombinant nucleic acid molecule containing sequences from different species are not directed to patent-ineligible naturally occurring subject matter. The Federal Circuit’s analysis may meaningfully affect how life sciences innovators and attorneys draft and defend patent claims involving engineered cells. It is also the latest in a line of decisions clarifying how the “markedly different characteristics” test from Diamond v. Chakrabarty, 447 U.S. 303 (1980), applies to §101 analysis in the modern biotechnology context. This article reviews the background of the dispute, the Federal Circuit's reasoning, and the practical implications for patent strategy in the field of biologics.
Our Take on AI: June 2026
Colorado Repeals and Replaces Its AI Act: On May 9, 2026, the Colorado General Assembly passed Senate Bill 26-189, which repeals SB 24-205 in its entirety and replaces it with a substantially revised framework taking effect January 1, 2027. The new framework shifts focus from "high-risk artificial intelligence systems" to "automated decision-making technology" ("ADMT") that "materially influences" a "consequential decision," and narrows scope through extensive carve-outs excluding routine technologies (anti-malware, calculators, spreadsheets, firewalls), consumer-facing chatbots subject to acceptable-use policies prohibiting use in consequential decisions, low-stakes decisions, advertising, content moderation, and search. Developers must provide deployers with documentation regarding intended uses, training data categories, known limitations, human review instructions, and material update notices, while deployers must provide point-of-interaction notices, post-adverse-outcome disclosures within 30 days, and meaningful human review on consumer request. Enforcement remains vested exclusively in the Attorney General—with no private right of action—through the Colorado Consumer Protection Act, subject to a 60-day cure period that does not apply to knowing or repeated violations. Notably, the Bill voids contractual indemnification clauses that would shield a party from liability for its own discriminatory use of ADMT (except where a developer's product was used in an unintended manner and the developer complied with its documentation obligations). Governor Polis is expected to sign the Bill in the coming weeks. Read more about this development here: "Colorado Repeals and Replaces AI Act."
EU Parliament and Council Reach Provisional Agreement on AI Act Amendments: On May 7, 2026, the European Parliament and the Council of the EU reached a provisional agreement on targeted amendments to Regulation (EU) 2024/1689 (the "EU AI Act"), simplifying several aspects of the Act just months before the original August 2, 2026 compliance deadline for high-risk AI systems—a deadline many stakeholders warned was unachievable given the absence of finalized harmonized standards and designated national authorities. The amendments defer the application date for high-risk obligations under Annex III (biometrics, employment, education, law enforcement, critical infrastructure, border management) to December 2, 2027, and for high-risk obligations for AI embedded in Annex I regulated products (medical devices, machinery, toys, lifts) to August 2, 2028. The deal also adds a new Article 5 prohibition—effective December 2, 2026—on AI systems used to generate non-consensual sexually explicit content or child sexual abuse material; carves machinery out from direct AI Act applicability where overlapping rules already exist; extends SME-style simplified requirements to small mid-cap companies; expands the legal basis for processing special categories of personal data to detect and correct bias in AI systems; reinforces the AI Office's supervisory powers over AI systems built on general-purpose AI models and those embedded in very large online platforms; and shortens the transparency grace period for AI-generated content under Article 50(2) from six to three months. Formal adoption is expected before August 2, 2026. Read more about this development here: "EU Parliament and Council of EU Provisionally Agree on Amendments to EU AI Act."
AI Counsel Code Podcast
In the episode, "AI, Privacy, and Cybersecurity: What Companies Must Know Now," Maggie Welsh sits down with Michelle Molner to unpack how artificial intelligence is reshaping data privacy, cybersecurity risk, and regulatory enforcement. The conversation explores the growing tension between AI’s demand for large data sets and long‑standing privacy principles like data minimization, consent, and purpose limitation. Listen to the full episode here.
May 2026 Intellectual Property Report Recap
In case you missed it, here is a link to our May 2026 Intellectual Property Report.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
[View Source]