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

Patent and Exclusivity: Exclusivity and patent protection are critical elements in the context of Abbreviated New Drug Application (ANDA) filings for generic drugs. Here’s a detailed relationship between the two: 1. Patent Protection: • Primary Barrier: Patents are a primary barrier to ANDA filings, as they prevent generic manufacturers from marketing their versions until the patent expires. • Hatch-Waxman Act: Encourages generic drug entry while respecting innovator patents, allowing generic firms to challenge patents through Paragraph IV certifications. • Patent Litigation: ANDA filers may be involved in litigation if they challenge existing patents, often leading to settlements or court rulings. 2. Exclusivity: • Market Exclusivity: Granted by the FDA to innovator drugs, providing additional protection beyond patents. Types include 5-year NCE exclusivity, 3-year new clinical study exclusivity, and orphan drug exclusivity. • 180-Day Generic Exclusivity: Awarded to the first generic applicant to file a Paragraph IV certification, blocking other generics from entering the market for 180 days. • Strategic Timing: Generic companies often time their ANDA filings to coincide with the expiration of exclusivity periods to maximize market entry benefits. 3. Interplay: • Delay in Generic Entry: Both exclusivity and patents work to delay generic competition, protecting the innovator’s market share. • Encouraging Innovation: By providing periods of market protection, both mechanisms encourage the development of new and innovative drugs. • Balancing Act: The regulatory framework aims to balance rewarding innovation (via patents and exclusivity) and ensuring affordable drugs through timely generic entry. Together, exclusivity and patent protection create a complex landscape that generic manufacturers must navigate in their ANDA strategies.

#EPO -𝐁𝐚𝐜𝐤𝐥𝐨𝐠 𝐃𝐨𝐰𝐧, 𝐒𝐨 𝐀𝐫𝐞 𝐘𝐨𝐮𝐫 𝐂𝐡𝐚𝐧𝐜𝐞𝐬 𝐨𝐟 𝐒𝐮𝐜𝐜𝐞𝐬𝐬.  The EPO Board of Appeal released its 2024 Annual Report. The backlog has been cut by 𝟔𝟑%, from 9,234 (2019) to 3,387 (2024). However, success on appeal has dropped just as sharply. Here are the takeaways: 𝐄𝐱𝐚𝐦𝐢𝐧𝐚𝐭𝐢𝐨𝐧 𝐀𝐩𝐩𝐞𝐚𝐥𝐬: 𝟐 𝐨𝐮𝐭 𝐨𝐟 𝟑 𝐚𝐫𝐞 𝐰𝐢𝐭𝐡𝐝𝐫𝐚𝐰𝐧 — often after the Board’s preliminary opinion. Of those that go to decision, only 1 in 3 succeed. Which means, overall, just 𝟏 𝐢𝐧 𝟏𝟎 appeals succeed. Of those where there has been a decision: ✅ Successful outcomes (grant or resumption) are steadily decreasing 48.3% (240 of 497) in 2020 32.0% (103 of 322) in 2024 ➡️ 33.7% relative decline in success since 2020 𝐎𝐩𝐩𝐨𝐬𝐢𝐭𝐢𝐨𝐧 𝐚𝐩𝐩𝐞𝐚𝐥𝐬: The same trend continues. 𝟏 𝐨𝐮𝐭 𝐨𝐟 𝟑 are withdrawn - usually after a preliminary opinion. Of those that go to a final decision: 📉 𝐏𝐚𝐭𝐞𝐧𝐭𝐞𝐞 𝐒𝐮𝐜𝐜𝐞𝐬𝐬 𝐈𝐬 𝐅𝐚𝐥𝐥𝐢𝐧𝐠 🟠𝐒𝐮𝐜𝐜𝐞𝐬𝐬𝐟𝐮𝐥 𝐨𝐮𝐭𝐜𝐨𝐦𝐞𝐬 𝐝𝐨𝐰𝐧 28.2% (258 of 915) in 2020 21.1% (278 of 1320) in 2024 ➡️ 25.2% relative decline in success since 2020 🟢 𝐌𝐚𝐢𝐧𝐭𝐚𝐢𝐧𝐞𝐝 𝐚𝐬 𝐠𝐫𝐚𝐧𝐭𝐞𝐝 𝐝𝐫𝐨𝐩 5.0% (46 of 915) in 2020 2.7% (36 of 1320) in 2024 ➡️ 46% relative drop in full wins for patentees since 2020 🔴 𝐑𝐞𝐯𝐨𝐜𝐚𝐭𝐢𝐨𝐧 𝐫𝐚𝐭𝐞𝐬 𝐮𝐩 24.2% (221 of 915) in 2020 31.7% (418 of 1320) in 2024 ➡️ 31% relative rise in revocation rate since 2020 𝐖𝐡𝐚𝐭 𝐂𝐡𝐚𝐧𝐠𝐞𝐝? Rules of Procedure of the Boards of Appeal (RPBA) 2020 tightened the rules, so late submissions are rarely admitted, resulting in preliminary opinions that are often final in effect. What has your experience been under RPBA 2020?

❓ A milestone for predictability of decisions at the Unified Patent Court - The Unified Patent Court is entering a new phase – the UPC’s litigation system becomes more and more apparent. Why do patentees file an infringement suit? Because they obtain an enforceable decision at the end that makes the defendant comply. Thus, ultimately enforcement is what litigation is about. With its Fujifilm v. Kodak decision (14 October 2025), the Court of Appeal has set the second important precedent to define how enforcement will take place across Europe. The key message is unmistakable: ➡ More legal certainty, more structure, fewer surprises. This ruling marks a turning point for patent litigation in Europe. It strengthens predictability, fairness, and transparency — giving businesses a clearer framework to enforce or defend their rights at the UPC. Those who know my engagement with the UPC know that I have always been very keen to pursue a well structured and fair enforcement system in Europe (see links below to my paper in Festschrift for Meier-Beck and my editorial work for the Wolters Kluwer AIPPI series). And now the UPC has set the framework for enforcement with a decision with 20 (!) headnotes. 💡 What this means for your strategy: The UPC is maturing, and a major uncertainty that is key to any court case has gone; and for defendants it comes with a higher bar for preparation and compliance. 💡 For claimants: 🔹 Make sure to include your enforcement plan in the complaint. 🔹 Make up your mind which evidence is required to comply with any of the requests and corresponding deadlines 💡 For technology-driven companies and defendants: 🔹 Keep compliance and internal documentation watertight. 🔹 Anticipate confidentiality issues before they arise. 🔹 and criticize anything in the requests that you don’t like as early as possible 🎯 Our insight... This is more than a procedural shift - it’s the UPC finding its rhythm. The Court is setting a framework that creates legal certainty for stakeholders across the world – another important step for the UPC to find its place in global enforcement strategies. Thanks to the incredible KATHER AUGENSTEIN team for this achievement, in particular, Robert Knaps, Sören Dahm and Dr. Benedikt Walesch, LL.M.

Patent Pro Tip: leap years affect US patent deadlines 2024 is a leap year, meaning there is an extra day in February. If a patent deadline is at the end of February this year, you might have an extra day. From MPEP 710.01(a): "For example, reply to an Office action with a 3-month shortened statutory period dated November 30 is due on the following February 28 (or 29 if it is a leap year), while a reply to an Office action dated February 28 is due on May 28 and not on the last day of May. Ex parte Messick, 7 USPQ 57 (Comm’r Pat. 1930)." What are your #PatentProTips regarding deadline oddities in patent filing?

𝗧𝗵𝗲 𝗔𝗹𝗶𝗰𝗲 𝗔𝗱𝘃𝗮𝗻𝘁𝗮𝗴𝗲: 𝗜𝗻𝘃𝗮𝗹𝗶𝗱𝗮𝘁𝗶𝗻𝗴 𝗦𝗼𝗳𝘁𝘄𝗮𝗿𝗲 𝗣𝗮𝘁𝗲𝗻𝘁𝘀 The U.S. Supreme Court's 2014 decision in 𝘈𝘭𝘪𝘤𝘦 𝘷. 𝘊𝘓𝘚 𝘉𝘢𝘯𝘬 fundamentally changed the landscape for software patents. Although this change has made it more challenging to obtain and enforce software patents, it has created significant opportunities for companies accused of infringement. The 𝘈𝘭𝘪𝘤𝘦 decision's impact is particularly strong for: • 𝗣𝗿𝗲-𝟮𝟬𝟭𝟰 𝗦𝗼𝗳𝘁𝘄𝗮𝗿𝗲 𝗣𝗮𝘁𝗲𝗻𝘁𝘀. Many software patents granted before 𝘈𝘭𝘪𝘤𝘦 are vulnerable to invalidation because they were examined under more lenient standards. • 𝗣𝗮𝘁𝗲𝗻𝘁𝘀 𝗖𝗹𝗮𝗶𝗺𝗶𝗻𝗴 𝗔𝗯𝘀𝘁𝗿𝗮𝗰𝘁 𝗜𝗱𝗲𝗮𝘀. Patents that claim business methods or data processing without sufficient technical implementation details are particularly at risk. • 𝗣𝗮𝘁𝗲𝗻𝘁𝘀 𝗟𝗮𝗰𝗸𝗶𝗻𝗴 𝗧𝗲𝗰𝗵𝗻𝗶𝗰𝗮𝗹 𝗗𝗲𝘁𝗮𝗶𝗹𝘀. Patents that describe their inventions primarily in functional terms, without explaining how the claimed functions are achieved technically, are vulnerable. As someone who both defends against software patents and helps clients obtain them, I see both sides of the 𝘈𝘭𝘪𝘤𝘦 equation. When writing new software patents, I carefully craft them to withstand 𝘈𝘭𝘪𝘤𝘦 challenges. However, many existing software patents, particularly those granted before 2014, weren't drafted with these requirements in mind. This creates significant opportunities for defendants. In my experience defending against software patent assertions: • Many software patents can be invalidated quickly and cost-effectively using 𝘈𝘭𝘪𝘤𝘦-based arguments • Even the threat of an 𝘈𝘭𝘪𝘤𝘦 challenge often motivates patent owners to settle on favorable terms • Courts are receptive to 𝘈𝘭𝘪𝘤𝘦-based challenges early in litigation However, crafting successful 𝘈𝘭𝘪𝘤𝘦-based invalidity arguments requires deep understanding of both the evolving law of patent eligibility and the technical aspects of software patents. As with the other defensive strategies I've discussed in this series, it's critical to work with qualified patent counsel who has specific expertise in software patents. In my next post, I'll explain how attorney-client privilege affects your patent defense strategy and why it's so important to preserve. #patents #intellectualproperty #softwarepatents

Don't sleep on your provisional patent application. 12 months goes by fast. Here's what to do during that time: Month -1 (Yes I know) * Make sure that your provisional patent application is set up properly to give you support for a later non-provisional application. * A "slide deck" provisional often won't cut it. * Make sure the application is signed properly, by the proper person. * Keep working on product and R&D. Month 6 * Start planning budgets for your non-provisional application. It will probably cost ~$15–25k over the next 2-3 years. * Start planning what you are going to claim. * Keep working on product and R&D. Month 9 * Retain a qualified and experienced patent attorney to help build the application. * Have them start building the non-provisional application so you can keep working on product and R&D. Month 11 * Refine (don't change, see Month -1) the non-provisional application to match your commercial product. * You should be filing your non-provisional application by this month at the latest. Rushing in Month 12 does not help you. * Keep working on product and R&D. Month 12 * This is when most people have an "oh §hoot" moment thinking about their provisional deadline and frantically contacting patent attorneys to realize they don't have the budget to file. * Keep working on product and R&D. Moral of the story: don't mess up your patent rights by sleeping on your provisional patent application. ------------------------ ⚡️ I build, manage, and defend global patent portfolios. 📌 Follow to learn practical patent law for #deeptech. ♻️ Repost if helpful to your network.

Case Background: The appellants, aggrieved by the rejection of their patent application titled “Method and System for Providing Effective Generation and Delivery of Interactive Online Digital Content,” appealed against the decision of the Patent Controller. The appellants, who initially promoted a company named “Gemini Associates,” had filed a patent application on behalf of the company in 2019, which they subsequently withdrew on 10th March 2020. They later re-filed the same claim in their individual capacities, presenting ten claims in their new application—two independent and eight dependent claims. Grounds for Rejection: In the First Examination Report (FER), the Controller objected to the patentability of the invention on grounds of lack of novelty and inventive step as defined under Sections 2(1)(l) and 2(1)(ja) of the Patents Act, respectively. The rejection was supported by two prior arts, designated as D1 and D2. Crucially, D1 was identified as the appellants’ own earlier patent application, which had been withdrawn. Appellants' Argument: The appellants contended that the prior art cited as D1 was their own application filed in 2019, which was officially withdrawn on 10th March 2020. They argued that the withdrawn application should not have been considered prior art because it was not available to the public and thus did not contribute to the state of the art. The Controller, however, passed an order on 19th October 2022, rejecting their application, citing Section 13(1)(b) of the Patents Act and asserting that the invention was identical to the subject matter of D1. Legal Analysis and Court’s Observations: The court allowed the appeal, emphasizing that the Controller had failed to recognize the critical aspect that D1, the prior art relied upon, was a withdrawn application by the appellants themselves. According to Sections 11A and 11B of the Patents Act, along with Rule 24 of the Patents Rules, a patent application can be withdrawn within 15 months from the filing or priority date, provided the request for withdrawal is submitted three months before the 18-month publication period. The court noted that the old application, filed on 14th January 2019 and withdrawn on 10th March 2020, was within the permissible withdrawal period. Consequently, the withdrawn application should not have been considered by the respondent as prior art. The court underscored that using a withdrawn application as prior art violates the provisions of the Patents Act. Implications of the Decision: This decision reaffirms the legal position that a withdrawn patent application does not constitute prior art. The court's ruling is significant as it ensures that inventors are not unfairly penalized for withdrawing applications and re-filing them. Advocate Ajay Amitabh Suman IP Adjutor [Patent and Trademark Attorney] #IPAdjutor #Legalupdate #IPUpdate #Indiaip #IPlaw #Iplawyer #Ipadvocate #LegalNews