Tech Patent Filing Process

One clause cost a Stanford founder billions. In 2013, Reggie Brown’s Stanford roommates froze him out of Snapchat, the app built on his original idea for disappearing photos. He eventually forced a $157.5 million settlement, but missed out on billions as Snapchat’s valuation skyrocketed. What was the clause that decided it all? The IP clause. Here's a 2-tier strategy for protecting IP in deals where your innovation is on the line: #Tier 1: Define what you’re giving away (and what you’re not) Most IP clauses read like shopping lists where everything gets thrown in the cart. Example: "Client shall exclusively own all right, title and interest in and to all Deliverables, including all Intellectual Property Rights therein." Risk: That single sentence can include your pre-existing IP, your proprietary methodologies, your trade secrets, and even ideas you develop after the contract ends. The Snapchat parallel: Brown claimed original ownership of the core Snapchat concept, worth millions at the company's $70 million valuation. The dispute arose because there were no clear agreements about who owned what when the idea first emerged. Better approach - The IP Inventory: Before you sign anything, create four buckets: ▪️Background IP: What you owned before this relationship started ▪️Foreground IP: What you'll create specifically for this project ▪️Derivative IP: Improvements to your existing IP using their input ▪️Joint IP: True collaborative creations requiring both parties Protective language you could use: "Company retains all rights to Background IP. Client receives exclusive license to Foreground IP developed solely for this project. Derivative IP improvements revert to Company with Client receiving perpetual license for their use case." #Tier 2: Negotiate value, not just rights The smartest IP clauses acknowledge that valuable innovations deserve ongoing compensation, not just upfront payments. Traditional model: You assign IP for a flat fee. They commercialize it for billions. You get nothing more. Value-sharing model: IP assignment includes revenue participation, milestone payments, or success fees tied to commercialization. A good framework to use: ▪️For low-value implementations: Flat assignment with reversion rights ▪️For medium-value innovations: Assignment with 2-5% revenue sharing capped at 3x development costs ▪️For breakthrough innovations: Joint venture structure or equity participation Industry-specific considerations: ▪️Software: Focus on derivative work definitions and license-back provisions ▪️Hardware: Emphasize manufacturing and improvement rights ▪️Services: Protect methodology IP while allowing client-specific customization ▪️Content: Separate creation rights from distribution rights Don’t let “standard” IP clauses sign away your future. Contracts don’t just govern today’s deliverables, they decide who owns tomorrow’s upside. #IntellectualProperty #ContractManagement #InnovationProtection

University License Agreement Common Mistakes. I recently helped out a friend negotiate a spin-out license agreement with his university. As a practicing lawyer, I negotiated dozens of these agreements. I thought that sharing some common mistakes could be helpful to others. 1. Not ensuring that the License grant contains all necessary rights. Not only does the company need a license to the patents, but also to any other university technology or materials that are necessary to commercialize the licensed patents (e.g, cell lines or know-how). 2. Not addressing future improvements. Ideally, get rights to any improvements that might be developed after the effective date of the license agreement. Alternatively, include a right for inventions related to the licensed patents over a particular period of time, or that relate to any improvements that are dominated by the licensed patents. At a minimum, get an option to negotiate a license to the improvements. 3. Not ensuring unencumbered sublicensing. Giving the University any right to approve a sublicense (including such approval shall not be unreasonably withheld) means you actually do not have the right to sublicense. Also, the University should assume all sublicensing agreements if the license agreement terminates before the sublicense terms expire. 4. Not limiting the scope of the University’s retained rights. University’s retained rights should be limited to non-commercial research and educational purposes, and should not allow conduct of clinical trials. To avoid sponsored research by a competitor allowing a competitor to gain access to improvement inventions, consider entering into a sponsored research agreement. 5. Not negotiating anti-stacking provisions for sublicenses. It is common to get the right to decrease the total amount of royalties paid to the university in a royalty period by a specified percentage if the company needs to obtain licenses from third parties to practice the licensed technology or commercially develop the licensed product. It is also important to reduce the sublicensing percentage owned to the university to reflect the number of licensors to be paid upon a sublicensing deal. Finally, it’s better to give equity than a right to a certain percentage of proceeds upon a liquidation event (IPO or sale). The equity grant is subject to dilution. Hope this helps! #licensing #techtransfer #entrepreneur #universityspinout

Some of the “broadest” patent claims can actually be the riskiest. Broad independent claims serve an important purpose. They cover a wide scope, help prevent competitors from copying your product, and can discourage design arounds. But they come with tradeoffs that are easy to overlook, especially in crowded fields. A broad independent claim is more likely to overlap with the prior art. That often means more rejections and more amendments. If you are focused only on getting a broad claim, it can even result in a claim that never gets allowed in a meaningful form. That is why a layered claim strategy matters. A better approach is to pair a broad independent claim with a range of narrowing dependent claims. Some of those dependent claims should build on each other so that the end of the chain carves out a much narrower scope. Those narrower claims are often where allowance happens because they include features not found in the prior art. They are also where real enforcement value can come from when they align with the actual product. Another strategy I like is including a broad independent claim as claim 1 and a second, narrower independent claim later in the claim set. That narrower independent claim can move through prosecution more efficiently and gives you a fallback position without relying entirely on dependent claims. The goal is not just to get a patent. It is to get claims that survive examination and actually map onto the product in the market.

68% of startup patent applications fail before they even get reviewed. That's not a legal problem. That's a strategy problem. Here's what we see again and again with innovative startups: They build something genuinely new. They file a patent, sometimes even proudly. And then somewhere between drafting and growth rounds, the whole thing quietly falls apart. The mistakes aren't random. They follow a pattern. → Filing too late. After a pitch, a demo, or a product launch. That public disclosure can kill your rights before the application is even submitted. → Drafting too narrow. Protecting one specific version of the product instead of the broader invention. Competitors find the gap and walk right through it. → Ignoring prior art. 41% of rejections come from undiscovered prior art. A proper novelty search isn't optional. It's the foundation. → Treating PCT filing as the finish line. It's not. It's a placeholder. Missing national phase deadlines in key markets quietly closes the door on international protection. Startups that file before their growth round are 6x more likely to secure funding. Patents aren't just legal documents. They're business assets, and they should be built like one. At EXCELON IP - Patent & Trademark Attorneys IP, we work with startups to align patent strategy with product roadmaps and funding timelines, not just filing checklists. Which of these mistakes have you seen kill the most promising startups?

AI and Battery/Clean Tech Patent Growth - EPO Patent Index The EPO Patent Index 2024 has been  released on March 19, 2025 by the European Patent Office (EPO). Despite economic headwinds, patent filings remained steady at 199,264 applications. -         Notable growth was seen in AI-related inventions, especially in computer technology (+3.3%), and in battery and clean energy technologies under electrical machinery and energy (+8.9%). Biotechnology grew by 5.4%, and transport technologies by 3.5%. -         Top patent applicants included Samsung, Huawei, LG, Qualcomm, and RTX. -         22% of European filings came from individual inventors and SMEs, while 7% were filed by universities and public research organisations. -         On the geographic front, 43.3% of applications came from EPO member states (+0.3%). Germany led Europe with 12.6% of all filings. The United States remained the top filing country with 24%, followed by Germany, Japan, China, and R. Korea. Growth was also notable from Ireland (+4.4%), UK (+3.1%), Switzerland (+3.2%), and Spain (+3.0%). -         The Unitary Patent gained strong traction in its second year. 🔗 Full report: https://lnkd.in/gZn4BmhP #EPO #PatentIndex2024 #Innovation #AI #Cleantech #Biotech #Transport #IntellectualProperty #UnitaryPatent

One of the most fundamental yet complex aspects of patent analysis is Patent Claim Mapping- a process that plays a crucial role in patent enforcement, infringement analysis, and competitive intelligence. As a patent expert, I often emphasize that understanding claim mapping is not just about matching words between claims and products; it’s about interpreting the technical scope of a patent in the context of real-world applications. Patent Claim Mapping is a methodical process where each element of a patent claim is analyzed and mapped against: 📌 Prior Art – To determine if a patent is valid or if there exist earlier disclosures that might render it non-novel. 📌 Potentially Infringing Products – To check if a product or technology in the market falls within the scope of an existing patent. 📌 Other Patent Claims – For assessing overlaps between two patents, which is critical in licensing, M&A due diligence, and portfolio management. 📍 Why is it Crucial? Patent Claim Mapping is not just a procedural step; it is a strategic tool that helps patent professionals, businesses, and R&D teams: 📌 Identify Infringement Risks – By understanding how closely a product aligns with an existing patent. 📌 Strengthen Patent Enforcement – By establishing a clear basis for infringement claims or legal actions. 📌Support Licensing and Monetization – By determining opportunities for partnerships, cross-licensing, or royalty-based agreements. 📌Improve R&D Decision-Making – By ensuring new developments don’t fall within existing patent claims.  📍Example Let’s consider a patented pharmaceutical formulation “NeuroCure”, which comprises three active compounds: A, B, and C, combined in specific concentrations to enhance neurological function. 👩💼Now, suppose another company launches a new drug, “NeuroX”, containing the same active ingredients in nearly identical proportions. 👩💼 A Patent Claim Mapping Analysis would be conducted as follows: Step 1: Break down the independent and dependent claims of NeuroCure into essential elements (compound identities, concentrations, formulation process). Step 2: Compare these elements with the composition of NeuroX to determine element-by-element overlap. Step 3: Assess literal infringement (if all elements match) or Doctrine of Equivalents (if minor differences exist but the invention functions similarly). Step 4: Conclude whether an infringement case can be established or if design-around strategies can be explored. 👩💼 How do you approach claim mapping in your patent practice? Let’s discuss this in the comments! #PatentStrategy #IPR #ClaimMapping #PatentEnforcement #TechLaw #PatentAnalysis

An expensive patenting mistake: One of the many reasons given for AstraZeneca pausing investment in the UK and considering moving its stock listing to the US was the cancellation of two SPCs linked to the patent for the antidiabetic agent dapagliflozin. As the NHS spends £300 million per year on this drug, the financial fallout to AZ will be immense. Why did this happen? Simply put, there wasn't any data on drug activity in the patent specification, therefore the patent is invalid for both lack of inventive step and insufficient disclosure. How this was missed in drafting and later in due diligence is a mystery, but it teaches us the following: (1) When drafting a patent application, especially for therapeutics, it's crucial to go beyond simply claiming a technical effect. You must provide data that makes the effect plausible. Since clinical data is often unavailable early on, include preclinical, in vitro, or in silico data to support your claims. Keep in mind you don't need to definitively prove your invention works, but the application must contain enough information for a skilled person to reasonably believe it would. This is known as plausibility. While you can use a priori reasoning or reference prior art to establish this, be careful not to make the invention seem obvious, as this could compromise its patentability. (2) For due diligence, carefully assess the data supporting a patent portfolio. The data must be robust and commensurate with the claims' scope. Patents that merely assert a technical effect without providing experimental results are vulnerable to attacks based on inventive step or sufficiency under current UK and European Patent Office standards. Therefore, having solid data is essential for a strong, defensible patent. https://lnkd.in/ea6tF9si

An appeal decision issued by the PTAB today further reinforces that if you are trying to patent AI or ML technology with the USPTO, you should explain how elements of the claims improve AI, ML or another technology/technical field. This decision relied on Ex parte Desjardins and Enfish in finding that "the claims recite an improvement in training of models for use by the recommendation engine to generate useful orchestrations." In the decision, the PTAB discussed the specification and claims together. Specifically, the PTAB stated: "For example, claim 1 recites the following feature: train at least one of a plurality of modular plug-and-play tacticspecific models using machine learning with a second training dataset comprising labeled feature vectors, wherein each of the labeled feature vectors comprises a set of orchestration features labeled with an indication of whether or not an engagement resulted within a defined time period. Claims 19 and 20 recite similar features. The Specification explains the improvement achieved by these claim limitations as follows: [t]his modular approach to tactic recommendation (i.e., with a separate model for each tactic) enables the model for each tactic to be updated and improved separately and independently from other tactic-specific models, and also enables models for new tactics to be easily incorporated into tactic recommendation model 475 (e.g., as a plug-and-play module). Spec. ¶ 101. Hence, the claims recite additional elements that integrate the judicial exception into a practical application, and the claims are patent eligible under § 101." If you are drafting an AI/ML patent application for filing in the US, you should explain how elements of the claims improve AI, ML or another technology/technical field. If you are appealing a patent eligibility rejection within the USPTO, you should arguing that such an improvement involves a practical application of any possible "abstract ideas." #patents #patentlaw #uspto

#enforcement #patents #productstrategy #ip Many patents look strong at first glance but lose impact when enforced, often because the claim strategy doesn’t match how the technology is used. Think of a car: a method claim might cover how a driver presses the accelerator and how the system adjusts torque; great in theory, but risky if different parties perform different steps. A system claim instead focuses on the throttle sensor, processor, and motor controller; much cleaner when targeting manufacturers. And modern products benefit from a Beauregard (computer readable medium) claim, capturing the software that calculates torque and generates control signals. By combining method, system, and CRM claims, you protect how the car is used, what it physically is, and what its software actually does; creating a far more enforceable and future‑proof patent strategy.

𝗧𝗵𝗲 𝗦𝗽𝗲𝗰𝘁𝗿𝘂𝗺 𝗦𝘁𝗿𝗮𝘁𝗲𝗴𝘆 - 𝗛𝗼𝘄 𝘁𝗼 𝗕𝘂𝗶𝗹𝗱 𝗣𝗮𝘁𝗲𝗻𝘁 𝗖𝗹𝗮𝗶𝗺𝘀 𝗧𝗵𝗮𝘁 𝗔𝗰𝘁𝘂𝗮𝗹𝗹𝘆 𝗪𝗼𝗿𝗸 Instead of choosing broad 𝗼𝗿 narrow, choose broad 𝗮𝗻𝗱 narrow 𝗮𝗻𝗱 everything in between. Many companies file patents with either very broad claims (that get rejected) or very narrow claims (that have little commercial value). The winning strategy? Build a protective spectrum that covers multiple levels of abstraction. 𝗧𝗵𝗲 𝗖𝗹𝗮𝗶𝗺 𝗛𝗶𝗲𝗿𝗮𝗿𝗰𝗵𝘆 𝗠𝗲𝘁𝗵𝗼𝗱 𝗘𝘅𝗮𝗺𝗽𝗹𝗲: • 𝗖𝗹𝗮𝗶𝗺 𝟭 (𝗕𝗿𝗼𝗮𝗱): Cover the essential insight competitors can't avoid • 𝗖𝗹𝗮𝗶𝗺𝘀 𝟮-𝟱 (𝗦𝘁𝗿𝗮𝘁𝗲𝗴𝗶𝗰 𝗠𝗶𝗱𝗱𝗹𝗲): Add key limitations that define your competitive advantage • 𝗖𝗹𝗮𝗶𝗺𝘀 𝟲-𝟭𝟬 (𝗜𝗺𝗽𝗹𝗲𝗺𝗲𝗻𝘁𝗮𝘁𝗶𝗼𝗻 𝗙𝗼𝗰𝘂𝘀𝗲𝗱): Protect specific technical approaches • 𝗖𝗹𝗮𝗶𝗺𝘀 𝟭𝟭-𝟭𝟱 (𝗙𝗮𝗹𝗹𝗯𝗮𝗰𝗸 𝗡𝗮𝗿𝗿𝗼𝘄): Cover exact embodiments as final protection 𝗘𝘅𝗮𝗺𝗽𝗹𝗲 𝗦𝘁𝗿𝘂𝗰𝘁𝘂𝗿𝗲 (𝗛𝘆𝗽𝗼𝘁𝗵𝗲𝘁𝗶𝗰𝗮𝗹): For a machine learning optimization patent: • 𝗖𝗹𝗮𝗶𝗺 𝟭: "Method for adaptive learning rate adjustment during neural network training" • 𝗖𝗹𝗮𝗶𝗺 𝟯: "...wherein adjustment is based on gradient variance analysis" • 𝗖𝗹𝗮𝗶𝗺 𝟳: "...using exponential moving averages with decay factor between 0.8-0.95" • 𝗖𝗹𝗮𝗶𝗺 𝟭𝟮: "...implemented with Adam optimizer and specific batch normalization" 𝗪𝗵𝘆 𝗧𝗵𝗶𝘀 𝗦𝗽𝗲𝗰𝘁𝗿𝘂𝗺 𝗪𝗼𝗿𝗸𝘀: 🎯 𝗣𝗿𝗼𝘀𝗲𝗰𝘂𝘁𝗶𝗼𝗻 𝗜𝗻𝘀𝘂𝗿𝗮𝗻𝗰𝗲: If broad claims get rejected, middle claims often survive with meaningful scope 🎯 𝗘𝗻𝗳𝗼𝗿𝗰𝗲𝗺𝗲𝗻𝘁 𝗙𝗹𝗲𝘅𝗶𝗯𝗶𝗹𝗶𝘁𝘆: Multiple claim levels give you options against different infringers 🎯 𝗩𝗮𝗹𝗶𝗱𝗶𝘁𝘆 𝗣𝗿𝗼𝘁𝗲𝗰𝘁𝗶𝗼𝗻: If broad claims are challenged, narrow claims provide reliable fallback 𝗧𝗵𝗲 𝗦𝘁𝗿𝗮𝘁𝗲𝗴𝗶𝗰 𝗦𝘄𝗲𝗲𝘁 𝗦𝗽𝗼𝘁: Here's where skiled patent attorneys add crucial value: 𝗖𝗹𝗮𝗶𝗺𝘀 𝟮-𝟭𝟬 𝗮𝗿𝗲 𝘄𝗵𝗲𝗿𝗲 𝘁𝗵𝗲 𝗺𝗮𝗴𝗶𝗰 𝗵𝗮𝗽𝗽𝗲𝗻𝘀. Innovators naturally think of Claim 1 (their big idea) and Claims 11-15 (what they built). But the strategic middle—those claims that balance essential features with competitive differentiation—requires experience with how competitors actually design around patents. Binary thinking (broad 𝗼𝗿 narrow) leaves money on the table in most situations. Strategic depth across the spectrum typically maximizes both patent strength and business value. Adopting the "everything in between" principle can make the difference between patents that are competitive weapons and those that are merely expensive paperwork. 𝗜𝗺𝗽𝗼𝗿𝘁𝗮𝗻𝘁 𝗡𝗼𝘁𝗲: This spectrum approach works well for most situations, but not universally. Sometimes focusing exclusively on broad claims or exclusively on narrow claims makes sense. The key is making these choices strategically based on your specific business goals. #patents #ip