Tech Patent Filing Process

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

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

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.

Inventors' Biggest Fear: “What if someone copies my idea with a small tweak and I lose everything?”🧐 You’re not alone. Many inventors hesitate to publish or launch their innovation fearing competitors might steal it with minor changes. Especially when your idea is a slight advancement, a new twist, a smarter design, a more efficient process and it feels vulnerable. So how do you protect your IP and sleep 🛌 better at night? Here’s a simple roadmap:👩🏻💼 ✅File a Provisional Patent Early- Secure your priority date. Even if your invention isn’t fully ready, this locks your idea legally before others can grab it. You get 12 months to finalize and file a complete patent. ✅ Use Trade Secrets Wisely- If your innovation includes a formula, recipe, or process that can be hidden, keep it confidential. Sign NDAs with employees and partners. Not everything needs to be patented to be protected. ✅Combine IP Rights- Use a mix of protections: ▪��Patent for technical novelty ▫️Design patent for product appearance ▪️Trademark for your brand name/logo ▫️Copyright for your manuals, designs, or code ✅ Broaden Your Patent Claims- Write your patent smartly. Cover not just the core feature but also possible variations competitors might attempt. A strong patent fence keeps copycats out. ✅ Publish Smartly (Defensive Publication) If you're not patenting something, publish it publicly. It becomes prior art, as a result, blocking others from getting a patent on a similar idea. 👩🏻💼You can consider this as a Real Example: A startup redesigned a coffee cup lid to prevent spills. Just a small tweak. They filed a provisional patent, kept the manufacturing technique a trade secret, and launched confidently. Today, their lid is in cafes across 3 countries, protected by strategy, not just fear. 👩🏻💼Don’t let fear kill your innovation. Protect it smartly. File early. Keep secrets. Use layered protection. Think like a creator and a strategist. #IPR #InnovationProtection #PatentStrategy

𝗪𝗵𝘆 𝗬𝗼𝘂𝗿 𝗙𝗶𝗿𝘀𝘁 𝗣𝗮𝘁𝗲𝗻𝘁 𝗔𝗽𝗽𝗹𝗶𝗰𝗮𝘁𝗶𝗼𝗻 𝗜𝘀 𝗬𝗼𝘂𝗿 𝗙𝗼𝘂𝗻𝗱𝗮𝘁𝗶𝗼𝗻 🏗️ 𝗟𝗶𝗸𝗲 𝗮 𝗵𝗼𝘂𝘀𝗲 𝗳𝗼𝘂𝗻𝗱𝗮𝘁𝗶𝗼𝗻, 𝘆𝗼𝘂𝗿 𝗳𝗶𝗿𝘀𝘁 𝗽𝗮𝘁𝗲𝗻𝘁 𝘀𝗽𝗲𝗰𝗶𝗳𝗶𝗰𝗮𝘁𝗶𝗼𝗻 𝗱𝗲𝘁𝗲𝗿𝗺𝗶𝗻𝗲𝘀 𝗵𝗼𝘄 𝗺𝘂𝗰𝗵 𝘆𝗼𝘂 𝗰𝗮𝗻 𝗯𝘂𝗶𝗹𝗱 𝗼𝗻 𝘁𝗼𝗽 𝗼𝗳 𝗶𝘁. I explained in my last post how continuation strategies can turn one patent application into a comprehensive patent family. Today's reality check: The strength of that foundation determines the value of everything you build afterward. 𝗧𝗵𝗲 𝗖𝗿𝗶𝘁𝗶𝗰𝗮𝗹 𝗖𝗼𝗻𝘀𝘁𝗿𝗮𝗶𝗻𝘁: Here's the catch that changes everything: 𝗬𝗼𝘂 𝗰𝗮𝗻 𝗼𝗻𝗹𝘆 𝗰𝗹𝗮𝗶𝗺 𝘄𝗵𝗮𝘁 𝘆𝗼𝘂𝗿 𝗼𝗿𝗶𝗴𝗶𝗻𝗮𝗹 𝘀𝗽𝗲𝗰𝗶𝗳𝗶𝗰𝗮𝘁𝗶𝗼𝗻 𝘀𝘂𝗽𝗽𝗼𝗿𝘁𝘀. Once filed, that specification is set in stone. Most inventors are shocked at how strictly this "no modifications" rule is enforced—you literally cannot add a single new technical detail. This magnifies everything we've discussed about strategic specification writing. That first document determines every future patent you can possibly get from this patent family while retaining the priority date. 𝗧𝗵𝗲 𝗖𝗼𝘀𝘁𝗹𝘆 𝗠𝗶𝘀𝘁𝗮𝗸𝗲: Companies that skimp on their first patent application—writing specs hastily to save costs—discover too late they've locked themselves out of broader protection. 𝗘𝘅𝗮𝗺𝗽𝗹𝗲 𝗼𝗳 𝗟𝗼𝘀𝘁 𝗢𝗽𝗽𝗼𝗿𝘁𝘂𝗻𝗶𝘁𝘆: • 𝗪𝗵𝗮𝘁 𝘁𝗵𝗲𝘆 𝗳𝗶𝗹𝗲𝗱: Narrow spec describing only their specific neural network architecture • 𝗪𝗵𝗮𝘁 𝘁𝗵𝗲𝘆 𝗻𝗲𝗲𝗱𝗲𝗱 𝗹𝗮𝘁𝗲𝗿: Claims covering competitor's different architecture that solved the same problem • 𝗥𝗲𝘀𝘂𝗹𝘁: Original spec couldn't support broader claims → No protection against competitors 𝗪𝗵𝘆 𝗧𝗵𝗶𝘀 𝗥𝗲𝗾𝘂𝗶𝗿𝗲𝘀 𝗟𝗼𝗻𝗴-𝗧𝗲𝗿𝗺 𝗘𝘅𝗽𝗲𝗿𝘁𝗶𝘀𝗲: Building patent families using continuations requires: • Writing specifications broad enough to anticipate likely future developments • Creating claim strategy options for competitive approaches that don't yet exist • Managing complex prosecution across multiple applications over many years Experienced patent attorneys develop the ability to build protection against future technological developments even without being able to predict them specifically. This level of strategic preparation is where patent counsel creates lasting value. 𝗧𝗵𝗲 𝗕𝗼𝘁𝘁𝗼𝗺 𝗟𝗶𝗻𝗲: Skimping on your first patent application to save a few thousand dollars can cost millions in lost protection opportunities. You're not buying one patent—you're buying the foundation for your entire competitive moat. Most companies discover this too late, after competitors enter their market and their narrow original specification can't support the claims they actually need. The difference between patent empire and expensive paperwork comes down to strategic specification writing upfront. #patents #ipstrategy

If you’re trying to figure out the best way to navigate the USPTO's patent examination process in light of the new PAP changes — this episode is a must-listen. Last month, the USPTO announced updates to the Patent Examiner Performance Appraisal Plan (PAP) for only the third time in 30 years, sparking concerns about what the new interview policy, streamlined review process, and production expectations will mean in practice. To find out, I spoke with Jerry Lorengo, USPTO's Deputy Commissioner for Patents, who helped lead the six-month effort to shape and implement these changes. Jerry provides insight into what’s changing — and why — and offers practical advice for succeeding at the USPTO from both the examiner and applicant perspectives in view of the changes. We discussed: *The process and reasoning behind the new PAP changes *What increased production expectations mean for examiners *Change in the new streamlined review process *How the USPTO will monitor and adjust the plan based on feedback *Jerry’s candid advice for how examiners and applicants can work together most effectively under the new framework Thank you to Jerry for coming on Clause 8 — and to USPTO Director John A. Squires and Deputy Director Coke Morgan Stewart for helping make the conversation possible and valuing open, transparent dialogue with the patent community. 🎧 Watch or listen to the full interview here with links below

A few people asked what it actually looks like to file patent applications the smart way. Here’s the framework I give startup teams who want to protect innovation without wasting capital: 1. Don’t file just because you “can.” Too many patent applications get filed on features that aren’t core to the product, the market, or the long-term strategy. Just because it’s technically new doesn’t mean it’s worth protecting. 2. Tie every filing to a business objective. What are you trying to accomplish? Protect revenue? Block a competitor? Support a valuation narrative? There needs to be a clear business case for every dollar spent on IP. 3. Prioritize enforceability over imagination. Broad, abstract patents might sound exciting, but they often fail when tested. Focus on what you can realistically enforce. If your claim can’t stand up in court or deter a competitor, it’s not helping you. 4. Treat foreign filings like investments — not checkboxes. Filing internationally gets expensive fast. File where you have customers, competitors, or partners. Not where “you might want protection someday.” 5. Reassess regularly. As your product evolves, your patent strategy should too. What mattered at seed stage may not matter at Series B. Trim the fat. Redirect capital where it matters. The bottom line: a strong patent strategy isn’t about quantity — it’s about alignment. The best portfolios are lean, targeted, and tied directly to how the company competes and grows. If you’re not sure whether your IP is doing that, it’s worth a second look.

𝐒𝐨𝐟𝐭𝐰𝐚𝐫𝐞 𝐩𝐚𝐭𝐞𝐧𝐭𝐬 🤔? 𝐘𝐄𝐒: 𝐒𝐨𝐟𝐭𝐰𝐚𝐫𝐞 𝐩𝐚𝐭𝐞𝐧𝐭𝐬 𝐢𝐧 𝐄𝐮𝐫𝐨𝐩𝐞: A growing trend often overlooked by developers 🧐 Many digital experts still believe that software patents are impossible to obtain in Europe 🙄. 𝐓𝐡𝐢𝐬 𝐦𝐢𝐬𝐜𝐨𝐧𝐜𝐞𝐩𝐭𝐢𝐨𝐧 𝐢𝐬 𝐧𝐨𝐭 𝐨𝐧𝐥𝐲 𝐨𝐮𝐭𝐝𝐚𝐭𝐞𝐝 𝐛𝐮𝐭 𝐩𝐨𝐭𝐞𝐧𝐭𝐢𝐚𝐥𝐥𝐲 𝐡𝐚𝐫𝐦𝐟𝐮𝐥 𝐭𝐨 𝐢𝐧𝐧𝐨𝐯𝐚𝐭𝐢𝐨𝐧 𝐚𝐧𝐝 𝐛𝐮𝐬𝐢𝐧𝐞𝐬𝐬 𝐬𝐭𝐫𝐚𝐭𝐞𝐠𝐢𝐞𝐬. The reality is that software patents are increasingly being granted by the European Patent Office (EPO), with grant rates steadily rising over the past decade. 1️⃣ 𝐓𝐡𝐞 "𝐬𝐨𝐟𝐭𝐰𝐚𝐫𝐞 𝐚𝐬 𝐬𝐮𝐜𝐡" 𝐢𝐬𝐬𝐮𝐞 While it's true that "software as such" is not patentable in Europe, computer-implemented inventions that solve technical problems or provide technical effects can indeed be patented. This nuanced approach has led to thousands of software-related patents being granted each year across various technology fields. 2️⃣ 𝐓𝐡𝐞 𝐦𝐢𝐬𝐜𝐨𝐧𝐜𝐞𝐩𝐭𝐢𝐨𝐧 𝐩𝐨𝐬𝐞𝐬 𝐬𝐢𝐠𝐧𝐢𝐟𝐢𝐜𝐚𝐧𝐭 𝐫𝐢𝐬𝐤𝐬: 💣 Missed opportunities: Developers may not recognize the patentable aspects of their innovations, potentially losing valuable IP assets. 💣 Unintentional infringement: Without awareness of existing patents, developers might unknowingly create infringing solutions. 💣 Reduced competitiveness: Companies failing to protect their software innovations may find themselves at a disadvantage in the global market. 3️⃣ 𝐓𝐡𝐞 𝐧𝐮𝐦𝐛𝐞𝐫𝐬 𝐚𝐫𝐞 𝐫𝐢𝐬𝐢𝐧𝐠 Recent trends show growth in patent applications for digital technologies, including AI, machine learning, and IoT. This highlights the increasing importance of software patents in Europe's innovation landscape. 4️⃣ 𝐓𝐨 𝐚𝐝𝐝𝐫𝐞𝐬𝐬 𝐭𝐡𝐢𝐬 𝐢𝐬𝐬𝐮𝐞 it's crucial for the IP community to: 📌 Educate developers about the evolving patent landscape in Europe. 📌 Encourage collaboration between technical experts and IP professionals. 📌 Promote a culture of IP awareness in software development teams. 📢 𝐘𝐨𝐮𝐫 𝐨𝐩𝐢𝐧𝐢𝐨𝐧 𝐜𝐨𝐮𝐧𝐭𝐬: How can we better communicate the nuances of software patentability to technical experts? What strategies can companies employ to identify potentially patentable software innovations?

The most expensive patent is the one you needed but never filed. The second most expensive is the one you filed but never needed. I have seen both ends of this in my work as an IP consultant. The first is more painful. A startup builds something genuinely novel. A competitor enters the market a year later with something almost identical. The founder comes to me asking what can be done. The answer, almost always, is very little. The window closed when they decided filing was something to think about later. Later arrived. The patent did not. The second is quieter but just as costly over time. A company files patents because filing feels like progress. Because investors ask how many patents you have. Because it looks good in a pitch deck. The patents accumulate. So do the renewal fees, the prosecution costs, the maintenance obligations. Nobody ever asks whether these patents protect anything that actually matters to the business. Nobody ever enforces them. They sit in a register, costing money every year, protecting nothing anyone is trying to copy. Both failures come from the same root cause. Patent strategy was never connected to business strategy. The question that drives good IP decisions is not how many patents do we have. It is not even can we patent this. It is a simpler and harder question. If a competitor copied this specific thing tomorrow, would it destroy our position in the market? If the answer is yes, file. File early. File carefully. File with claims broad enough to matter and specific enough to survive. If the answer is no, ask whether there is a better form of protection. A trade secret. A first mover advantage. A brand. A relationship. Sometimes the answer is that copying this would not actually hurt you, because what you really own is something that cannot be replicated by reading a patent. The cost of the first mistake is a lost market. The cost of the second is a wasted one. Both are avoidable. But only if the question is asked before the filing decision, not after. #Patents #IPStrategy #IntellectualProperty