Writing Patent Applications

𝗬𝗼𝘂𝗿 𝗦𝗽𝗲𝗰𝗶𝗳𝗶𝗰𝗮𝘁𝗶𝗼𝗻 𝗶𝘀 𝗬𝗼𝘂𝗿 𝗦𝘁𝗿𝗮𝘁𝗲𝗴𝗶𝗰 𝗙𝗼𝘂𝗻𝗱𝗮𝘁𝗶𝗼𝗻 (𝗠𝗼𝘀𝘁 𝗚𝗲𝘁 𝗧𝗵𝗶𝘀 𝗪𝗿𝗼𝗻𝗴) 🏗️ Here's a scenario that keeps me up at night: A tech company discovers their competitor is infringing their patent. But when they try to amend their claims to better capture the infringement, they realize their specification doesn't support the claims they actually need. 𝗥𝗲𝘀𝘂𝗹𝘁: Unenforceable patent worth millions on paper, worthless in practice. 𝗕𝗲𝘆𝗼𝗻𝗱 𝗠𝗶𝗻𝗶𝗺𝘂𝗺 𝗖𝗼𝗺𝗽𝗹𝗶𝗮𝗻𝗰𝗲: Most people view the specification's purpose as satisfying legal disclosure requirements. While that's the bare minimum, it's not sufficient for strategic value. Meeting disclosure requirements gets your patent granted. Strategic specification writing creates options for prosecution, enforcement, and portfolio building that can determine your competitive position for years. 𝗧𝗵𝗲 𝗦𝗽𝗲𝗰𝗶𝗳𝗶𝗰𝗮𝘁𝗶𝗼𝗻 𝗦𝗽𝗲𝗰𝘁𝗿𝘂𝗺 𝗦𝘁𝗿𝗮𝘁𝗲𝗴𝘆: Instead of writing narrow specs (only your implementation) or overly broad specs (vague generalizations), write strategically across multiple levels: 🎯 𝗟𝗲𝘃𝗲𝗹 𝟭 - 𝗖𝗼𝗿𝗲 𝗣𝗿𝗶𝗻𝗰𝗶𝗽𝗹𝗲: The fundamental insight that makes your invention work 🎯 𝗟𝗲𝘃𝗲𝗹 𝟮 - 𝗔𝗹𝘁𝗲𝗿𝗻𝗮𝘁𝗶𝘃𝗲 𝗔𝗽𝗽𝗿𝗼𝗮𝗰𝗵𝗲𝘀: Different ways to implement that principle 🎯 𝗟𝗲𝘃𝗲𝗹 𝟯 - 𝗦𝗽𝗲𝗰𝗶𝗳𝗶𝗰 𝗘𝘅𝗮𝗺𝗽𝗹𝗲𝘀: Detailed embodiments including your current implementation 🎯 𝗟𝗲𝘃𝗲𝗹 𝟰 - 𝗩𝗮𝗿𝗶𝗮𝘁𝗶𝗼𝗻𝘀: Optional features, parameters, and modifications 𝗦𝗼𝗳𝘁𝘄𝗮𝗿𝗲 𝗘𝘅𝗮𝗺𝗽𝗹𝗲 (𝗛𝘆𝗽𝗼𝘁𝗵𝗲𝘁𝗶𝗰𝗮𝗹): For a data compression innovation: • 𝗟𝗲𝘃𝗲𝗹 𝟭: Adaptive compression that adjusts algorithms based on data characteristics • 𝗟𝗲𝘃𝗲𝗹 𝟮: Statistical analysis, machine learning, or pattern recognition approaches • 𝗟𝗲𝘃𝗲𝗹 𝟯: Specific ML model with training requirements and performance metrics • 𝗟𝗲𝘃𝗲𝗹 𝟰: Alternative training methods, different architectures, optimization techniques 𝗪𝗵𝘆 𝗧𝗵𝗶𝘀 𝗪𝗼𝗿𝗸𝘀: ✅ 𝗣𝗿𝗼𝘀𝗲𝗰𝘂𝘁𝗶𝗼𝗻 𝗳𝗹𝗲𝘅𝗶𝗯𝗶𝗹𝗶𝘁𝘆 when examiners reject broad claims ✅ 𝗘𝗻𝗳𝗼𝗿𝗰𝗲𝗺𝗲𝗻𝘁 𝗽𝗼𝘄𝗲𝗿 with rich specs that support favorable claim interpretation ✅ 𝗣𝗼𝗿𝘁𝗳𝗼𝗹𝗶𝗼 𝗯𝘂𝗶𝗹𝗱𝗶𝗻𝗴 from one spec supporting multiple continuation strategies 𝗧𝗵𝗲 𝗦𝘁𝗿𝗮𝘁𝗲𝗴𝗶𝗰 𝗥𝗲𝗮𝗹𝗶𝘁𝘆: Your specification determines every future option you'll have. Engineers write specs that document what they built. Patent attorneys write specs that strategically support what needs to be protected. Writing strategically across the spectrum requires understanding both the technology deeply and the competitive landscape broadly—plus experience with how patents actually get prosecuted and enforced. #patents #ip

📝 Reviewing your first patent application? Before filing a patent application, patent attorneys generally ask their clients to review the draft application. Especially if this will be your first patent, this can be a bit daunting. Where to start? What to look for? Here are some tips: 1. Begin with the claims. They're the most important part as they will define what will be protected. 2. Check the detailed description. Its purpose is to support the claims. 3. Read the background section. It provides context for the invention but has only limited impact. Key steps when reviewing the claims: 1. ✅ Ensure all essential features are included 2. 🚩 Flag potential ambiguities or easy workarounds 3. 🔍 Verify what is claimed covers what you plan to do or sell 4. 🔢 Check for consistent use of terminology and proper claim references Key steps when reviewing the description: 1. 📚 Verify all claimed features are described 2. 💡 Highlight key advantages of your invention 3. 📏 Specify how measurement data is obtained 4. 🔗 Check all terminology is consistent with claims 5. 🖼️ Confirm figures are clear, labeled, and referenced 6. 🔬 Ensure sufficient detail for others in the field to reproduce the invention 7. ⚙️ Include all feasible variations and embodiments unless there are strategic reasons to do otherwise Remember, as an inventor, you know the invention best. Your input is thus crucial in ensuring the application accurately and comprehensively describes the invention. Also take the time you need to thoroughly review the draft. A patent application is a significant investment and once filed, no new information can be added. Good luck reviewing! And if you have any further helpful tips or experiences, please share them in the comments below.

Section 101 rejections remain one of the toughest hurdles for software patents. How you approach it can make all the difference. The real question isn’t whether the invention does something useful—it’s whether it solves a technical problem in a technical way. That’s where many applications go wrong. Too often, they frame the idea as a business objective implemented on a computer. The USPTO sees right through that. What examiners want to see is a clear, concrete improvement in computing itself—faster processing, better memory use, more secure data handling, or new interactions between hardware and software. When I work with software clients the goal is always the same: make the invention sound like engineering, not abstraction. That means precise claims, supported by a detailed specification with diagrams, pseudocode, and performance data. If you can show how the invention improves technology, you’ve already done half the work of overcoming Alice. I also encourage clients to anticipate 101 early. Build the eligibility rationale right into the application. Don’t wait for a rejection to start thinking about it. During prosecution, be prepared to cite the USPTO’s own examples, talk to your examiner, and if necessary, use declarations to emphasize what’s unconventional about the invention. Software remains patentable in the U.S.—but only when it’s drafted as a technical solution, not a business plan translated into code. The difference is subtle, but it’s the difference between rejection and allowance.