Preparing a strong patent application is one of the most important steps an innovator or business can take to protect intellectual property. The process is complex, expensive, and often intimidating. Yet when handled well, patents can safeguard core inventions, attract investment, and provide leverage in a competitive market.

Here is a practical guide for anyone navigating the patent process, with essential lessons on choosing the right legal counsel, strategies for filing an application, and the business considerations that companies of all sizes must weigh.

What Is A Patent?

A patent is a right granted by a government to exclude others from practicing an invention for a limited period of time.

A patent gives you the right to exclude others, not necessarily the right to practice your invention yourself. For example, your invention might improve upon an older, patented technology. While you can patent the improvement, practicing it could still require a license from the original patent holder.

Patents differ from other types of IP such as copyright. Copyright protects expressions (e.g., software code), while patents protect the underlying ideas or methods. This broader scope makes patents powerful but also more difficult to obtain.

There are three types of patents:

• Utility patents protect inventions like drugs, software, or mechanical devices.
• Design patents protect ornamental features like the shape of a product.
• Plant patents cover asexually reproduced plant varieties. These are relevant in industries like biotech.

Choosing the Right Counsel

The quality of your patent application often comes down to the quality of your attorney.

Sanjay Prasad of Appleton Luff explains that there are many factors to consider when choosing counsel including:

• Technical background: Can they speak your industry language, understand your technology, and bring new perspectives?
• Conflicts of interest: While technical experience in your industry is desirable, this will need to be balanced against any actual or potential conflicts. Avoid firms representing direct competitors.
• Firm size: Larger firms manage volume, while smaller firms may offer more personalized attention. There may also be certain people that you specifically want to work with, which smaller firms can better cater to.
• Location: Even in virtual times, in-person strategy sessions can spark breakthroughs.

It’s also crucial to think longer term. As you start the filing process, you’re going to be investing a fair amount of effort and time into your counsel and getting them to understand your company, your business, and your technology. With the amount of investment you are putting in, you need to ensure that your counsel can address your needs as they change over time.

Cost Control

No patent strategy is complete without thinking about dollars and cents. There’s the upfront cost in filing, and then there’s a cost in prosecution.

Prosecution costs can vary widely and tend to be harder to judge. However, if the scope of the invention is pretty well understood upfront, that can be much easier to budget for.

So, budget smart. Consider:

• Domestic versus international filings.
• Filing single comprehensive applications versus multiple narrow ones.
• Maintenance fees over the lifetime of a patent.

Building a Portfolio Strategically

As we’ve just established, patents are expensive. Drafting, filing, maintaining, and enforcing them can cost tens of thousands. As such, patents should be treated as business investments, not just prestige pieces. As with other investments, you should consider the following:

• Investor expectations: Early-stage startups often need patents to attract funding.
• Return potential: Do these patents add value through protection, licensing, or barriers to entry?
• Sunk costs: Don’t keep funding a weak patent just because you’ve already spent a lot on it.

A widely used cost-saving strategy is filing under the Patent Cooperation Treaty (PCT), which grants applicants up to 30 months before deciding whether to pursue foreign filings. This allows smaller companies to see if they can establish a business case for the product before deciding whether to file in more costly jurisdictions.

Drafting Strong Claims

Ellyar Barazesh of Baker Botts emphasizes: “The most important part of a patent is the claims that define the scope of the invention, what you’re covering, and what you can exclude others from doing.”

In short, claims define what your patent actually protects, and crafting them well is everything.

Watch out for:

• Divided infringement: Ensure a single party (ideally a competitor, not a customer) would be liable for infringement.
• Abstract language: Particularly risky in software. Courts may reject these under Section?101 without a strong technical explanation.

Ultimately, even the best-written claim won’t survive if the subject matter itself isn’t considered patentable under US law. That brings us to one of the most hotly debated issues in modern patent practice: subject matter eligibility under Section 101.

Subject Matter Eligibility: Section 101 Challenges

One of the trickiest parts of patent law today is deciding what kinds of inventions are even eligible for a patent. Under Section 101 of the US Code, only processes, machines, articles of manufacture, and compositions of matter can be patented.

Over the years, courts have carved out exceptions: abstract ideas, natural laws, and mathematical concepts aren’t patentable on their own.

This problem became front and center after the Supreme Court’s 2014 Alice v. CLS Bank decision, which made it harder to protect software and computer-related inventions. That’s especially relevant now, with the explosion of artificial intelligence and machine learning.

The key lies in how you frame the invention. Patent success often depends on your ability to tell a compelling technical or engineering story. This is easier said than done, particularly in the case of academic institutions, where the invention covers more abstract ideas embedded in academic manuscripts.

In practice, that means avoiding broad, abstract claims and instead pointing to concrete technical improvements, like faster processing, better memory use, or a novel way of handling data. Examiners look for these kinds of ‘real-world’ benefits when deciding if a software or biotech invention deserves patent protection.

Functional Claiming and Specifications

Patent law allows functional claiming, which describes an invention in terms of what something does rather than what it is.

This is becoming increasingly common and important with the development of technology, circuits, and software, where their importance lies in their function rather than their internal structure.

However, courts have raised red flags if the underlying structure, the ‘how’ behind the invention, isn’t spelled out in the patent’s written description. Inventors may hesitate to reveal details, but if you don’t disclose the structure, your claim can be invalidated later.

That’s where the specification comes in. The specification is the part of a patent application that describes the invention in full detail, supporting the claims. If your claims are challenged, you can point to the specification to show that you had disclosed enough to deserve the protection you requested.

Brian Landry of Saul Ewing LLP advises inventors to think expansively about the invention from every kind of angle.

Provide examples, variations, and alternatives in the specification, even if they’re not part of your initial prototype. The broader and more detailed your disclosure, the more flexibility you’ll have later if you need to enforce your patent or file continuations.

• Avoid ‘patent profanity’ like ‘must’ or ‘essential,’ which can trap you into a narrow reading later.
• Use flowcharts and diagrams, especially for software, to show exactly how your invention works.
• Think like your future competitor. What workarounds would they try? Describe them in your spec so they’re covered.
• Don’t skimp on provisional applications. They still need enough disclosure to support later claims.

Patent Preparation Is Key

A well-prepared patent can become a powerful tool that helps you attract investment, deter competitors, and open licensing opportunities. Getting there requires more than simply describing an invention. It means choosing the right counsel, telling a compelling technical story, budgeting wisely, and being honest about whether an invention truly adds value.

Patents are not an afterthought or a formality. They are an investment in the future of a business. Done well, they provide not just protection, but momentum.

To learn more about this topic, view Intellectual Property 301 – Patents / Patent Application Preparation. The quoted remarks referenced in this article were made either during this webinar or shortly thereafter during post-webinar interviews with the panelists. Readers may also be interested to read other articles about Intellectual Property.

This article was originally published here.

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