Patent Claim Strategies

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.

How to Get Broader Patent Claims—Without Bullying the Patent Examiner 💡🔒🤝 Some people claim you can’t get broad patent protection because examiners only allow narrow coverage that’s easy to design around. 🔒❌➡️ This viewpoint often comes from litigators who dabble in patent prosecution and see the process as purely adversarial. ⚖️🤔 In my experience, you can secure broader claims without waging war against the Patent Office. 🤝🏢 Here are four strategies: 📚🎯 1) Start with a Thorough Prior Art Search 🔎📖 Don’t just look for a “yes/no” on novelty—dig deep to pinpoint exactly what your invention does that the prior art does not. 🤔💡 When you know the true point of difference, you can craft broader claims that clearly stand apart from existing solutions. 🚀✅ 2) Be Your Own Lexicographer 🏷️💬 If you’ve created something entirely new, why not coin a term for it? 🆕🤔 Defining a new concept in your specification—and carrying that definition into the claims—forces the examiner (and any challengers) to confront your invention on your terms. 🤝💡 It highlights your invention’s novelty in a way generic language never could. 💯✨ 3) Opt for Clarifying, Not Narrowing, Amendments ✍️📝 When faced with prior art rejections, don’t just concede scope and shrink your claims. 📉❌ Instead, revise your language to clarify exactly how your invention differs from the cited art. 💡🔬 The result? Your coverage remains broad, but it’s easier for the examiner to see how you’re innovating. 🏆🤝 4) Be Honest—Don’t Get Greedy 🤷♂️💡 Sometimes, the real issue is that the invention isn’t as novel as originally hoped. 🤔💭 If you’re trying to claim ground you didn’t truly invent, you’ll end up battling the examiner. ⚔️👀 Accept the real scope of your invention and focus on valid, defensible claims. 🏛️✅ After all, the best patent attorneys aren’t magicians—bigger ideas simply lead to better, broader patents. 🪄🧙♂️ What do you think? Have you found ways to secure broader patent coverage without antagonizing your examiner? Let’s discuss! 💬👥

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

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

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.

#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.

Broad or narrow patent claims: which is best? 🤔 The reality is not so simple. People familiar with patent claims know that broader claims generally translate to better coverage. That is, broader claims are harder to avoid infringing. ↪️ However, broad claims can read on more potential prior art and be generally harder to grant. This translates to higher costs of prosecution, i.e., making the patent cost more money. 🤑 Overly broad claims can also sometimes prove difficult to enforce since they can still be invalidated after the patent issues. 🧗 So while broad claims seem ideal, there can be some tradeoffs. 🔁 Knowing this, some people reasonably ask why they shouldn't simply start with narrow claims to begin with. ❓ However, patent examiners can interpret claims broadly and sometimes combine prior art references in unpredictable ways. This means that even claims which begin narrow can be rejected before they are are narrowed further to get the patent allowed. ✋ For many patent applicants, a balanced approach makes sense. I like to think about patent claim scope as a negotiation: in a negotiation, both parties often start asking for more, and compromise until they meet in the middle. This helps both parties protect their own value. 🤝 Also, just like in negotiations, asking for too much can bog down the dealmaking process. Similarly, asking for patent claims which are too broad can lead to dragging out prosecution and increasing costs. 📈 How, then, can you balance seeking broad claims without excessively dragging out prosecution? 🤔 One general principle that can help you strike a balance is to focus on core points of innovation. These are the aspects of your innovation that demonstrate the main advancements over existing solutions, the tweaks that required a "light bulb moment." 💡 By focusing on these core innovations, patent applicants might be able to focus on claiming fewer features (where fewer limitations means broader claims) while reducing the chance that those features or combinations of features exist in the prior art. This can lead to broader scope at a lower price, although the exact tradeoffs between scope and cost can still vary quite a bit case-to-case. All that said, this approach is not one-size-fits-all, and patent applicants may sometimes intentionally file narrow claims from the beginning. For example, a patent applicant with a large patent portfolio may seek narrow coverage for inventions which are not essential to the business in order to gain some coverage while minimizing costs. This post is not legal advice and does not form an attorney-client relationship. Always talk to a registered patent practitioner for advice on patent claim scope.⚠️ #StartupPatentThursdays #startup #patent

𝗧𝗵𝗲 '𝗔𝗹𝗹 𝗘𝗹𝗲𝗺𝗲𝗻𝘁𝘀' 𝗥𝘂𝗹𝗲: 𝗬𝗼𝘂𝗿 𝗦𝗲𝗰𝗿𝗲𝘁 𝗪𝗲𝗮𝗽𝗼𝗻 𝗶𝗻 𝗦𝗼𝗳𝘁𝘄𝗮𝗿𝗲 𝗣𝗮𝘁𝗲𝗻𝘁 𝗗𝗲𝗳𝗲𝗻𝘀𝗲 One of the most powerful tools for defending against software patent assertions is surprisingly simple: the "all elements" rule. This fundamental principle of patent law states that to prove infringement, the patent owner must show that your product includes 𝗲𝘃𝗲𝗿𝘆 𝘀𝗶𝗻𝗴𝗹𝗲 𝗲𝗹𝗲𝗺𝗲𝗻𝘁 of the patent claim. In other words, 𝗺𝗶𝘀𝘀𝗶𝗻𝗴 𝗷𝘂𝘀𝘁 𝗼𝗻𝗲 𝗲𝗹𝗲𝗺𝗲𝗻𝘁 𝗱𝗲𝗳𝗲𝗮𝘁𝘀 𝗶𝗻𝗳𝗿𝗶𝗻𝗴𝗲𝗺𝗲𝗻𝘁. This rule is particularly powerful for software patents because: • 𝗦𝗼𝗳𝘁𝘄𝗮𝗿𝗲 𝗣𝗮𝘁𝗲𝗻𝘁 𝗖𝗹𝗮𝗶𝗺𝘀 𝗔𝗿𝗲 𝗖𝗼𝗺𝗽𝗹𝗲𝘅. Software patent claims often include many elements, with each element providing an opportunity to demonstrate non-infringement. • 𝗦𝗼𝗳𝘁𝘄𝗮𝗿𝗲 𝗜𝘀 𝗛𝗶𝗴𝗵𝗹𝘆 𝗖𝘂𝘀𝘁𝗼𝗺𝗶𝘇𝗮𝗯𝗹𝗲. Even if your software performs similar functions to what's claimed in the patent, it likely does so in ways that don't match every element exactly. • 𝗧𝗶𝗺𝗶𝗻𝗴 𝗮𝗻𝗱 𝗦𝗲𝗾𝘂𝗲𝗻𝗰𝗲 𝗠𝗮𝘁𝘁𝗲𝗿. If the patent claim requires steps to be performed in a specific order, performing them in a different order can avoid infringement. In my experience, a detailed analysis of software patent claims by qualified counsel often reveals multiple elements that are missing from the accused products. For example, I've helped clients avoid litigation by demonstrating that their software, although serving a similar purpose to the patented invention, performs key operations in a different sequence than required by the patent's claims. However, 𝗶𝗱𝗲𝗻𝘁𝗶𝗳𝘆𝗶𝗻𝗴 𝗺𝗶𝘀𝘀𝗶𝗻𝗴 𝗲𝗹𝗲𝗺𝗲𝗻𝘁𝘀 𝗿𝗲𝗾𝘂𝗶𝗿𝗲𝘀 𝗯𝗼𝘁𝗵: • Detailed understanding of how software patent claims are interpreted under the law • Deep technical knowledge of how the accused software actually works • Experience crafting non-infringement positions for software patents As I've emphasized in previous posts, it's critical to have a licensed and qualified patent attorney perform this analysis, both to ensure accuracy and to maintain attorney-client privilege. The right expertise can help identify multiple non-infringement positions based on the "all elements" rule. In my next post, I'll discuss how recent changes in patent law have created new opportunities for invalidating software patents, particularly those granted before 2014. And contact me directly if you've been accused of patent infringement or if you're concerned about potential infringing someone else's patent. #patents #intellectualproperty #softwarepatents

Putting a pin in this approach taken for a client from the set of tools in my IP Strategy Toolbox. This client needs a patent on its core product that is about to be introduced to customers in a B to C play. It is my job to figure out how to make that happen. In Summer 2022, I drafted a claim set for a client for a PCT application. In a somewhat unusual circumstance, the client filed a "Bypass" US application as an accelerated Trackone filing while the PCT case was pending. This allowed the US examination of the same subject matter to be examined while the PCT case timeline played out. We were assigned a USPTO examiner with a 10% allowance rate in a Group Art Unit with a 28% overall allowance rate. In an interview with her and her SPE, we were told that "advancing prosecution means the applicant abandons their application." The examiner's stats on appeal were dismal for applicants, and we determined that the best approach was to abandon this case because the examiner was the roadblock to our getting a patent, not the quality of the invention we were seeking to patent. The good news was that the client's go to market strategy was not evolved at the time this US Bypass case was filed, so the claims on review in this doomed application were not aligned with the company's current business strategy. We are now at the National Phase filing point. Yesterday, I spent several hours drafting claims from the PCT application disclosure. As my fellow practitioners know, this is not always easy because when an application was filed 2.5 years ago, the disclosure may not read exactly like the product that is being delivered to the customer. This means it often takes some creativity to create claims that work for the client as they need them now. When I was satisfied with the reading of the claims, I fired up #PatentBots Group Art Unit Predictor. As I wrote the claims initially for this National Phase case, the GAU with the "Application Assassin Examiner" was a likely place for this new application to fall. But, other GAUs in the mix had a significantly higher overall allowance rate. I made a couple of tweaks to the claim language and Voila! we are now more likely to be assigned to one of the other GAUs. We'll see how this plays out as the application makes its way through the USPTO as a Trackone application. This effort reminded me of a post I wrote sometime ago, which is linked below. In short, there are lots of tools in the IP Strategy Toolbox. If you are someone who needs a patent--and why are you filing one if you don't--you need to make sure that your patent team not only knows what these tools are, but also which ones are best to deploy for you. #patentstrategy #ipstrategy #uspto #patentexamination https://lnkd.in/eb2zAX9i

Strategic Life Cycle Management using combination therapies to extend patent life, improve efficacy, and combat competition. The focus is on Lotrel (a combination of Lotensin [benazepril] by Novartis and Norvasc [amlodipine] by Pfizer), both indicated for hypertension. Lotensin (an ACE inhibitor) had a patent expiration in 2003, while Norvasc (a calcium channel blocker) expired in 2007. By combining these two drugs, the complementary mechanisms provide added efficacy and safety, crucial for maintaining competitive positioning in the hypertension market. Value Added: 1. Enhanced Efficacy & Safety: Synergistic action from combining two distinct mechanisms of action (ACE inhibitor + Calcium Channel Blocker). 2. Extended Patent Protection: The combination patent adds 14 years, protecting the product from generic competition. 3. Prolonged Market Exclusivity: By utilizing Norvasc’s patent, the combination extends protection by 4 years post-Lotensin expiration. Life Cycle Management (LCM) is typically employed at critical points in a drug's life cycle, especially when it faces the following challenges: 1. Loss of Exclusivity (LOE): When a drug's patent is about to expire, generic competitors can enter the market. To delay this and maintain revenue streams, companies use LCM strategies like launching combination therapies, reformulations, or new indications. 2. Losing Market Share: If a drug starts losing market share due to increased competition or newer, more effective treatments, LCM can help revitalize the product. Companies may combine the drug with others to improve efficacy or safety, as seen with Lotrel (benazepril + amlodipine) or introduce patient-friendly formulations like extended-release versions. Patent Extensions: By launching combination therapies or reformulations, companies extend the patent life (e.g., the Lotrel combination provided 14 extra years).