AI-Assisted Patenting in 2026: Inventorship, Patentability, Prosecution and Post-Grant Strategy

Michelle K. Holoubek, Director | Sterne, Kessler, Goldstein & Fox P.L.L.C

Michelle K. Holoubek is a director in Sterne Kessler’s Electronics Practice Group. With a background in relativistic physics and computational modeling, Michelle combines her legal expertise and technical acumen to guide clients through evolving artificial intelligence and deep-learning landscape. She is well-versed in protecting software-based innovation through holistic complements of patents, trade secrets, and copyrights, as well as securing freedom to operate for startups and Fortune 100 companies alike. Having handled hundreds of computational applications at the USPTO, patent-eligible subject matter (§101) is Michelle’s special area of expertise.

• Education & Credentials

Michelle earned her J.D. from George Mason University’s Antonin Scalia Law School and her B.S. in Physics from Louisiana State University, where she focused her research on gravitational wave detection, working on both LSU’s resonant bar detector ALLEGRO and the Laser Interferometer Gravitational-Wave Observatory (LIGO), including a summer research fellowship for LIGO at the California Institute of Technology.

• Recognition & Leadership

Michelle has been named one of the Top 50 Women in PTAB Trials by the PTAB Bar Association each year the list has issued (2019, 2021, 2025). She serves on the Executive Committee for LSU’s College of Science and is a member of the LSU Foundation’s National Board.

• Professional Involvement

Michelle is a contributing author of Patent Office Litigation (Thomson Reuters Westlaw, 2012) and its Second Edition (2017), as well as the chapter on “Patentability Challenges at the U.S. Patent and Trademark Office” in the ABA’s Patent Litigation Strategies Handbook, 4th Edition. She routinely speaks and publishes on AI and software patentability and eligibility.

• Experience

Michelle has been lead counsel in inter partes reviews, post-grant reviews, and reexaminations for both patent owners and challengers, and provides infringement and invalidity opinions across biotech, fintech, and mechanical technologies. She brings an interdisciplinary approach to digital healthcare and bioinformatics—including deep-learning AI models for biomics, genomics, diagnostics, and drug discovery—and has deep experience in optics and photonics, from flexible photonics for medical applications to photon entanglement for imaging and cryptography.

Lestin L. Kenton, Jr., Director | Sterne, Kessler, Goldstein & Fox P.L.L.C

Lestin is a leading PTAB litigator and IP strategist, specializing in IP portfolio development and monetization. He has successfully led over 100 PTAB proceedings, including IPR, PGR, and CBM reviews, across the electronics, mechanical, and life sciences industries, securing favorable outcomes for both petitioners and patent owners.

• Education & Credentials

Lestin earned his J.D. from Widener University School of Law and his B.S.E. in Computer Science from the University of Pennsylvania. A former software developer specializing in ground-based air surveillance radar, he seamlessly bridges complex technical innovation and IP strategy.

• Recognition & Leadership

Recognized nationally for his expertise, Patexia ranked Lestin among the most active and best-performing PTAB attorneys (2018–2023), including a top 50 ranking for Best Performing Attorneys Representing Patent Owners and a top 100 ranking overall.

• Professional Involvement

Lestin is one of the firm’s AI leaders, advising companies on protecting AI innovations, mitigating legal risks, and ensuring compliance with global regulations. With deep expertise in machine learning, NLP, deep-learning architectures, and AI governance, he helps clients audit, protect, and commercialize AI assets and navigate emerging issues such as AI-generated content, protection of AI training data and models, and AI model licensing. He spearheaded the development of the firm’s AI IP Audit Program, a comprehensive suite of strategic audits designed to help companies navigate the complex legal landscape of AI-based intellectual property.

• Experience

Lestin’s technical expertise spans sensor technologies, autonomous systems and robotics, MedTech, bioinformatics, fintech, IoT, wireless and telecommunications, computer graphics and architecture, audio and video streaming, optics, computer vision, cloud computing, cybersecurity and data protection, and defense technologies. Beyond litigation, he works closely with startups, mid-sized enterprises, and multinational corporations to craft patent strategies that maximize commercial value through licensing, enforcement, strategic acquisitions, and defensive positioning.

SESSION 1 – AI-Assisted Inventions: Inventorship, Patentability and Building a Defensible Prosecution Record | 2:30pm – 3:30pm

AI-assisted invention is creating new risks for patent counsel well before a patent reaches litigation. This session examines how attorneys should approach inventorship, conception, disclosure, patentability, and prosecution strategy when AI tools participate in the inventive process. Using the USPTO’s revised 2025 inventorship guidance and current examination practices as the framework, attendees will learn how to distinguish meaningful human contributions from mere prompting or recognition of AI-generated results, preserve evidence of conception, and develop a prosecution record that can withstand later validity and inventorship challenges.

BREAK | 3:30pm – 3:40pm

SESSION 2 – From Patent Office to PTAB: Challenging and Defending AI-Related Patents | 3:40pm – 4:40pm

AI and software patents present distinctive challenges when patentability decisions move beyond prosecution and into contested proceedings. This session examines how AI-related patents can be attacked and defended through §101, §§102/103, claim-scope, and technical-evidence disputes, with particular attention to the transition from prosecution to post-grant proceedings. Drawing on deep experience in PTAB litigation and the prosecution of software and AI technologies, the session provides a practical framework for identifying weaknesses before issuance and developing stronger positions when an AI-related patent is later challenged.