Key Takeaways from Navigating the Current U.S. IP Landscape: Key Legal Developments for Korean Companies (Session 3)

Recent changes in the U.S. intellectual property landscape are creating new challenges and opportunities for Korean companies looking to protect and enforce their IP rights.

In Sterne Kessler’s most recent Navigating the Current U.S. IP Landscape: Key Legal Developments for Korean Companies webinar, Directors Richard Bemben, Ivy Estoesta, Jason Fitzsimmons, and Josephine Kim discussed the latest legal and regulatory developments affecting patents, trademarks, and enforcement strategies in the United States. Key takeaways from their presentation include:

1. Assess PTAB and reexamination strategy early: Changes in the PTAB and ex parte reexamination landscape make forum selection a case-specific decision. Forum selection is critical and should be made with a complete view of the dispute. Evaluate the patent, prosecution history, parallel proceedings, timing, settled-expectations factors, and real-party-in-interest issues before committing to a strategy.

2. Responding to patent infringement warning letters will impact future exposure: A warning letter can affect notice, damages, and commercial decisions. Ignoring a warning letter does not stop potential exposure from developing. The specificity of the allegation matters: a general reference to a portfolio may present different notice issues than a letter identifying particular patents, accused products, and claim charts. Involve counsel, control internal communications, and evaluate the allegation before deciding whether or how to engage, redesign, license, negotiate, or challenge.

3. Test both liability and the claimant’s damages model: The legal framework for responding to trademark and copyright demands is different than patents, but the practical challenges are similar. Demands should be evaluated against the asserted rights, relevant defenses, actual use, registration and licensing facts, and business impact. A demand figure may rely on assumptions or a licensing model that does not reflect the challenged use.

4. Leverage “Plain Dissimilarity” early: Range of Motion suggests that defendants accused of U.S. design patent infringement should assess whether the accused design is plainly dissimilar to the properly construed claimed design, particularly after functional features have been given little or no weight, as a potential basis for seeking early dismissal or summary judgment.

5. Use the new GUI design flexibility strategically: Updated guidance from the United States Patent and Trademark Office (USPTO) no longer requires drawings showing graphical user interface (GUI) designs on a display screen, but the title and claim must still identify an article of manufacture. The guidance also accepts more flexible title and claim formulations and expressly addresses projected, holographic, augmented reality, and virtual reality interfaces. Review pending and future filings with the product’s deployment model and disclosure needs in mind.

6. Earlier engagement of registered U.S. patent practitioner may be necessary: Certain papers submitted to the USPTO on behalf of foreign-domiciled applicants and owners—including those in a U.S. designation of a Hague International Design Application—must now be signed by a registered U.S. patent practitioner, making earlier engagement of U.S. counsel increasingly important. Korean applicants should consider engaging U.S. counsel earlier to avoid delays when post-filing submissions before the USPTO become necessary.

7. AI-generated content may be discoverable like any other business record: Recent cases have begun exploring how U.S. privilege and litigation discovery laws apply to AI-generated content like prompts, outputs, chat logs, and meeting transcripts. Companies should be careful not to waive privilege in their use of AI tools by involving counsel and limiting distribution of sensitive work product. Companies should also adopt an AI governance policy, manage AI transcription and recording, and negotiate protective orders that address AI challenges.