Patents

Patent Disputes Are Technical by Nature, Not Emotional

Unlike many business conflicts, patent disputes are not resolved by narratives or goodwill. They are decided by technical comparisons between legal language and real-world products.

Courts and decision-makers focus on:

• What the patent actually claims
  
  
• How the accused product is built or operates
  
  
• Whether the two overlap in legally meaningful ways
  
  

This technical grounding is why patent disputes often surprise business owners. A product can look similar or compete directly in the market and still avoid infringement—or infringe despite surface-level differences.

Why Claim Language Drives Every Outcome

Patent claims are not marketing descriptions or general explanations. They are precise legal boundaries. Every word matters.

Effective patent dispute strategies start by:

• Identifying which claims matter most, not which ones look impressive
  
  
• Understanding how courts interpret claim terms
  
  
• Distinguishing between required elements and optional features
  
  

Many disputes fail because one side assumes infringement (or non-infringement) without fully appreciating how narrowly or broadly claims may be read.

Choosing Counsel Is a Strategic Decision, Not a Formality

Patent disputes occupy a narrow legal space that blends engineering concepts with courtroom strategy. Not every IP lawyer operates comfortably in that space.

Experience matters most when counsel has:

• Deep familiarity with patent claims and specifications
  
  
• Experience analyzing infringement from both sides
  
  
• Exposure to how judges evaluate technical arguments
  
  
• A practical understanding of how patent disputes escalate
  
  

Attorneys who focus exclusively on filings or registrations may not be equipped for adversarial patent analysis. Likewise, lawyers without technical training may overlook critical details that determine the outcome.

Strategies for Asserting Patent Rights Effectively

For patent owners, enforcement is about precision, not reach.

Strong enforcement strategies tend to:

• Focus on the clearest, most defensible claims
  
  
• Align claimed features with observable product functionality
  
  
• Avoid overstating the scope of protection
  
  
• Anticipate counterarguments before they arise
  
  

Overly aggressive enforcement can backfire by inviting invalidity challenges or undermining credibility. A targeted, technically grounded approach often produces better results.

Strategies for Defending Against Infringement Allegations

Being accused of patent infringement does not mean liability is inevitable. Many claims collapse under close scrutiny.

Common defense pathways include:

• Demonstrating that a required claim element is missing
  
  
• Showing that an accused feature operates differently than claimed
  
  
• Exposing ambiguity or overbreadth in claim language
  
  
• Identifying weaknesses that threaten patent enforceability
  
  

Patent disputes are often decided on narrow grounds. One missing or altered element can change the entire analysis.

The Value of Early, Objective Assessment

One of the most effective tools in any patent dispute is early clarity.

Before costs escalate, an objective technical review can help determine:

• Whether a claim is likely enforceable
  
  
• Whether a product realistically infringes
  
  
• Where negotiation makes sense—and where it does not
  
  

This type of assessment empowers businesses to make informed decisions instead of reacting under pressure.

How Lloyd & Mousilli Approaches Patent Disputes

Lloyd & Mousilli approaches patent disputes with a focus on leverage, clarity, and long-term business impact. We represent both patent holders and accused parties, which gives us insight into how disputes unfold from every angle.

Our work includes:

• Early claim-focused risk analysis
  
  
• Practical infringement and non-infringement assessments
  
  
• Strategic positioning for negotiation or litigation
  
  
• Aligning legal action with business objectives
  
  

Patent disputes carry real financial and operational consequences. Winning them requires more than familiarity with intellectual property—it requires disciplined analysis and strategic restraint.

If you are facing a patent dispute or considering enforcement, schedule a free consultation with Lloyd & Mousilli to discuss your position and the smartest path forward.

The Real Starting Point: Understanding the Invention Clearly

The strongest patent applications begin with clarity. Before any claims are written or forms are filed, patent counsel must fully understand how the invention works and why it matters.

This means going beyond surface-level descriptions and focusing on:

• What problem the invention solves
  
  
• How it solves that problem differently than existing solutions
  
  
• Which technical features actually drive value
  
  
• Where flexibility and variation exist within the design
  
  

Information may come in many forms—written explanations, sketches, prototypes, internal documentation—but the goal is always the same: develop an accurate technical picture that can support durable patent claims.

Identifying What Is Worth Protecting

Not every feature of an invention deserves equal attention in a patent application. One of the most important early decisions is determining where legal protection should be concentrated.

That analysis often involves:

• Distinguishing core innovations from implementation details
  
  
• Understanding how competitors might design around the invention
  
  
• Identifying optional or alternative configurations that should be disclosed
  
  
• Balancing broad protection with realistically defensible claims
  
  

In some cases, a preliminary patent landscape or novelty review can help inform these decisions, though searches are a strategic tool—not a prerequisite for filing.

Why the Written Description Is the Backbone of the Patent

While patent claims define legal rights, they only succeed when supported by a thorough and carefully constructed description.

The written portion of a utility patent application exists to:

• Explain the invention in technical terms
  
  
• Support multiple claiming strategies over time
  
  
• Preserve flexibility for future claim amendments
  
  
• Prevent limitations from being read into the claims unintentionally
  
  

Well-drafted descriptions often seem more detailed than necessary at first glance. That detail is intentional. Elements that appear minor during filing may later become decisive during examination or enforcement.

In some cases, explicitly describing what the invention does not include can be just as important as describing what it does.

Claim Strategy Is Not Static

Patent claims are not meant to remain frozen. They evolve as the application moves through examination.

Effective claim drafting anticipates that:

• Examiners will challenge scope
  
  
• Claims may need to be narrowed, restructured, or divided
  
  
• Multiple layers of protection may be required
  
  

Rather than pursuing maximum breadth at filing, experienced patent counsel focuses on building a claim framework that can adapt without sacrificing core protection.

The Importance of a Thoughtful Review Before Filing

Once a nonprovisional application is filed, its contents cannot be expanded. For that reason, the final review is one of the most critical stages of the process.

At this point, inventors should focus less on stylistic wording and more on substance, asking:

• Is everything described accurately?
  
  
• Are all meaningful variations disclosed?
  
  
• Could a technical reader recreate the invention based on this disclosure?
  
  
• Are there features we might want to claim later that are not yet described?
  
  

Revisions at this stage can prevent costly limitations later.

Timing Expectations for Nonprovisional Filings

The timeline for preparing a utility patent application depends on the invention’s complexity and the level of iteration required.

In many cases:

• Initial drafting begins shortly after receiving complete invention materials
  
  
• One or two rounds of revisions are sufficient
  
  
• Filing typically occurs within several weeks once alignment is reached
  
  

Urgent filings may be possible depending on circumstances, though quality and completeness should never be sacrificed for speed.

When “Patent Pending” Applies

An invention becomes patent pending immediately upon filing a patent application with the USPTO. This status applies to both provisional and nonprovisional applications and signals that formal rights are being pursued, even though the patent has not yet been granted.

Understanding Cost Without Oversimplifying It

There is no single price for a utility nonprovisional patent application. Cost varies based on:

• Technical complexity
  
  
• Depth of disclosure required
  
  
• Scope and number of claims
  
  
• Long-term prosecution expectations
  
  

Lloyd & Mousilli typically provides flat-fee estimates for initial drafting and filing after evaluating the invention itself. Initial costs generally cover preparation and filing but do not include later stages of prosecution, such as responding to examiner rejections, which are common and expected.

Separating initial cost from prosecution cost allows clients to make clearer budgeting decisions over time.

Where Searches Fit Into the Process

Patent searches serve different strategic purposes and are not automatically included with filing.

Some clients seek searches to assess how crowded a field may be. Others pursue freedom-to-operate analyses to evaluate infringement risk. Each type of search addresses a different question and carries different cost and timing considerations.

The decision to conduct a search should be aligned with business goals, not treated as a procedural checkbox.

A Strategic Asset, Not Just a Filing

A utility patent application can support investment discussions, licensing opportunities, competitive positioning, and enforcement—but only if it is drafted with intention.

Lloyd & Mousilli works with entrepreneurs, startups, and established companies to ensure patent filings reflect both technical realities and business priorities. Our focus is not just on getting applications filed, but on building patent assets that can sustain value over time.

If you are considering a utility nonprovisional patent application or want to understand whether patent protection makes sense for your invention, schedule a free consultation with Lloyd & Mousilli to discuss strategy, timing, and next steps.

When Visual Design Is the Real Competitive Advantage

Design patents are most effective when a product’s appearance carries independent value apart from its functionality.

They are commonly used to protect:

• Distinctive product housings or silhouettes
  
• Packaging or container configurations
  
• Visual layouts for interfaces and displays
  
• Decorative or ornamental surface features
  

If the originality of a product lies primarily in how it performs or operates internally, utility patent protection may be more appropriate. In many cases, however, companies benefit from combining design and utility protections to safeguard both form and function.

Design Patents Serve a Different Purpose Than Utility Patents

Understanding what design patents do—and what they don’t do—is key to making the right filing decision.

Design patents protect:

• The ornamental appearance of an item
  
• What is shown visually in the patent drawings
  

They do not protect:

• Functional processes or methods
  
• Internal mechanics or performance features
  
• How a product is used or assembled
  

This distinction is critical. A design patent can be very strong when the appearance itself is difficult to change without sacrificing market appeal.

How Design Patent Protection Works in Practice

While the filing process is typically simpler than for utility patents, design patents still follow a structured examination path.

A typical design patent matter progresses through:

• Preparing drawings and drafting the application
  
• Review by a U.S. patent examiner
  
• Issuance, if the design meets legal standards
  

Although many design applications proceed smoothly, careful preparation is essential because the drawings define the scope of protection.

Preparing a Design Patent Application Strategically

The effectiveness of a design patent is determined long before the application is filed. Early decisions about what to show—and what not to show—have lasting consequences.

Preparation typically includes:

• Selecting views that fully capture the design’s distinctive elements
  
• Deciding whether to claim an entire product or only specific components
  
• Identifying alternative configurations worth protecting
  
• Ensuring visual consistency across all figures
  

Design patent drawings are not illustrations for marketing purposes. They are legal documents, and precision matters.

Why Design Drawings Carry So Much Weight

In a design patent, the drawings are the claim. Unlike utility patents, where words define scope, design patents rely almost entirely on visuals.

Well-prepared drawings:

• Clearly show what is protected
  
• Use consistent line types and shading
  
• Include multiple views to eliminate ambiguity
  
• Employ broken lines where appropriate to exclude unclaimed features
  

Small drafting choices can meaningfully affect enforcement later, which is why professional illustration and close review are critical.

The Role of the Written Portion of the Application

Although brief, the written portion of a design patent application plays an important supporting role. It typically:

• Identifies the subject matter of the design
  
• Describes each figure accurately
  
• Clarifies the use of broken lines or omitted views
  

Errors at this stage—even minor directional mistakes—can create unnecessary complications. Accuracy and consistency are key.

Timing Expectations for Design Patents

Design patent timelines are generally shorter than those for utility patents but still require patience.

Typical milestones include:

• Time to prepare formal drawings and application materials
  
• USPTO examination, which often takes over a year
  
• Resolution following examination, depending on whether objections arise
  

Some applications move from filing to issuance within two years, though timing varies with examiner workload and application complexity.

Predictability Compared to Utility Patents

Design patents tend to be more predictable than utility patents, both procedurally and financially.

As a category:

• Allowance rates are generally higher
  
• Examiner objections are often formal rather than substantive
  
• Overall prosecution tends to be more streamlined
  

That predictability makes design patents especially attractive for startups and companies seeking cost-effective protection.

Understanding the Cost Structure

The cost of a design patent depends on several components rather than a single flat number.

Costs usually include:

• Attorney fees for preparing and filing the application
  
• Government filing and issue fees
  
• Professional illustration costs
  
• Additional fees if examination issues arise
  

At Lloyd & Mousilli, we often structure design patent work using flat-fee arrangements to provide clarity and cost control from the outset.

Addressing USPTO Feedback When It Arises

Some design applications receive feedback from USPTO examiners. Common issues may relate to:

• Drawing format or consistency
  
• Shading or line-type requirements
  
• Similarity to prior designs
  

When this occurs, responses often involve revised drawings or focused legal argument. These situations are usually manageable with proper preparation and coordination.

Integrating Design Patents Into a Broader IP Strategy

Design patents are rarely used in isolation. They often work best alongside:

• Trademark protection for brand identifiers
  
• Utility patents for functional features
  
• Trade dress protection where applicable
  

When used strategically, design patents can deter copying, support licensing discussions, and strengthen brand recognition.

How Lloyd & Mousilli Helps Clients Protect Product Design

Lloyd & Mousilli works with companies at all stages—from early product development to established brand enforcement—to secure design patent protection that aligns with business goals.

Our team helps clients:

• Determine whether design protection makes strategic sense
  
• Define the right scope for visual protection
  
• Coordinate technically precise drawings
  
• Manage the application process through issuance
  
• Align design patents with trademarks and broader brand strategy
  

If you are launching a product, redesigning an existing one, or concerned about competitors copying your visual identity, schedule a free consultation with Lloyd & Mousilli to discuss whether design patent protection is right for your situation and what the path forward may look like.

Issued Patents vs. Filed Applications

It is important to distinguish between patent applications and granted patents. Applications may be abandoned, rejected, or substantially narrowed during prosecution. Issued utility and design patents, however, represent inventions that have cleared examination and are legally enforceable.

When assessing a patent attorney’s experience, focusing on issued patents provides a more accurate picture of results delivered for clients.

Using USPTO Patent Public Search to Review Patent Activity

The USPTO provides a public research tool known as Patent Public Search (PPUBS), which allows users to search issued patents using a variety of criteria, including practitioner name.

The platform offers two search options:

• Basic Search, which can be useful for general research but may return incomplete results.
  
  
• Advanced Search, which allows more precise queries and is recommended when reviewing practitioner activity.
  
  

Selecting the Correct Patent Database

To review granted U.S. patents, users should select the USPAT database. This database covers issued patents dating back to 1970 and is generally sufficient for evaluating the work of currently practicing patent attorneys.

Older patents may be found in separate archival databases, but for most due diligence purposes, USPAT provides relevant and reliable results.

Searching by Patent Attorney Name

When searching by practitioner name, advanced queries may be required. Attorney names may appear with middle initials or variations, which can affect search accuracy.

Using proximity search commands—designed to locate first and last names that appear close together—can help capture a more complete set of results. In some cases, adding parameters such as firm affiliation or date ranges may further refine search outcomes.

Because patent records can be formatted differently depending on filing practices and firm policies, no single search method is perfect. Multiple inquiries are often necessary to obtain meaningful results.

Confirming Patent Attorney Registration

Not all attorneys who advertise intellectual property services are registered to practice before the USPTO. Only registered patent attorneys and patent agents are authorized to prepare and prosecute patent applications.

The USPTO Office of Enrollment and Discipline maintains a public directory that allows users to:

• Confirm whether a practitioner is registered
  
  
• Determine whether they are a patent attorney or agent
  
  
• Review their registration date, which reflects how long they have been authorized to practice patent law
  
  

This verification step is critical for inventors deciding who can lawfully represent them before the USPTO.

Common Limitations of Patent Searches

Patent searches by practitioner name do have limitations. Some firms list only the firm name on issued patents, rather than individual attorneys. In those situations, searching by individual name may produce limited or no results.

Additionally, U.S.-only search tools do not capture:

• International patent filings
  
  
• PCT applications
  
  

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What is an Invention Disclosure?

An invention disclosure is a detailed, written record of the invention that is provided to a patent attorney. It is not a formal patent application, but rather a comprehensive description of the idea, its features, and its potential uses. The invention disclosure acts as a blueprint, capturing the essential innovative aspects of the invention so the patent attorney can transform it into a concise, clear patent application. Additionally, the invention disclosure is often used to formulate and guide a prior art search (“prior art” is a term used to describe publicly available information or the current state of the art). A thorough invention disclosure results in a more accurate prior art search, which, in turn, allows both the inventor and the patent attorney to better understand where the invention stands, along with charting a path to best position the invention within the inventive space. Properly disclosing the invention at an early-stage results in a smoother, more cost-effective patent prosecution process.

What Should an Invention Disclosure Include?

· Title of the Invention: A clear and concise title that accurately reflects the invention.

· Inventor(s): Full names and contact information of all inventors.

· Description of the Invention: A detailed explanation of the invention, including, for example, how the invention works or operates, how the invention is made or constructed, and how the invention is used. Oftentimes, drawings, diagrams, flowcharts or photographs, if available, are helpful.

· Problem Solved: Explain the problem the invention addresses and how it provides a solution.

· Advantages and Benefits: Highlight the unique advantages and benefits of the invention over existing technologies.

· Potential Applications: Describe the various ways the invention can be used.

· Prior Art: List any existing patents, publications, websites, products, or other publicly available information that relate to the invention, even if the prior art seems different than the invention.

Why is an Invention Disclosure Important?

· Proper Documentation & Working Through the Invention: Putting ideas into writing forces a level of clarity and precision often absent in the purely mental concept. The act of translating thoughts into words requires a structured approach, demanding that terms are defined in a meaningful way, ensuring logical connections, and highlighting any potential inconsistencies. This process helps to flesh out vague notions, revealing gaps in understanding, and prompting further refinement and clarity. By externalizing the ideas into a written record, a tangible representation is created that can be critically examined transforming the once abstract concept into meaningful guidance for the patent attorney and those conducting the prior art search.

· Streamlining Preparation of the Patent Application: The disclosure serves as a foundation for the patent application, providing the patent attorney with the necessary information to draft accurate and comprehensive claims.

· Investment and Licensing Opportunities: A well-crafted patent invention disclosure can easily be transformed into a powerful way to generate investment and licensing opportunities. By simply modifying the document in a way that targets potential investors and licensees, the invention disclosure offers a clear articulation of the invention's value and potential. By meticulously documenting the invention's unique features, advantages, and applications, the disclosure can be used to attract potential licensees and investors. Moreover, the invention disclosure can also highlight the invention's potential to solve industry-specific problems or carve out new market niches, attracting businesses seeking innovative solutions. Presenting the invention disclosure in an efficient, streamlined manner enables the potential licensees or investors to quickly assess the invention's suitability for their needs and recognize the invention’s market relevance, fostering confidence in its commercial viability, and ultimately creating opportunities for licensing agreements and the ability to generate investment funding.

5 Key Points and Reminders for New Inventors:

1. Document Everything: Keep detailed records of your invention, including sketches, notes, and prototypes.

2. Maintain Confidentiality: Treat your invention as confidential at least until you have filed a patent application. Avoid public disclosures or discussions that could jeopardize your patent rights.

3. Avoid Public Disclosure Before Filing: Do not publish, present, or publicly share details about your invention before securing protection.

4. Don't Delay: File your invention disclosure as soon as possible after conceiving your invention.

5. Seek Professional Help: Consult with a patent attorney to ensure your invention disclosure is properly prepared and to understand the patent process.

Final Thoughts:

The invention disclosure is a critical first step in protecting your intellectual property. By creating a comprehensive and well-documented disclosure, the groundwork for a successful patent application is laid, which can ultimately increase the chances of securing exclusive rights in the invention.

Lloyd & Mousilli boasts a team of experts in patent and intellectual property law. Let us employ our extensive experience helping early-stage innovators to receive the fullest patent protection over the novel idea at the earliest date to ensure priority. We have overseen patent strategies for consumer products at some of the largest technology companies and want to share this experience with you. The different teams at our firm, led by seasoned attorneys, work in synergy to help businesses seamlessly weave their patents throughout their broader business strategy. We will ensure that any equity agreements, assignment rights, employment agreements, non-disclosures and all other relevant documents accurately reflect the scope and rights regarding your innovations. Our goal at Lloyd & Mousilli is to help clients accomplish their long-term goals by working closely with them at each stage and tailoring our advice in accordance with the client’s aspirations and needs.

For legal assistance, reach out and consult with the Lloyd & Mousilli patent legal team or set-up a free consultation through our website for questions about invention disclosures, patent applications, or any questions relating to intellectual property or other business needs.

Value Created Through Patenting Mobile Apps

Receiving a patent secures for the inventor the right to exclude others from making, using, offering for sale, selling, or importing the patented invention. Patenting a mobile app, functionally, is no different than the locomotive referenced in Fig. 1 below. A patent serves to safeguard the invention ensuring that unique features within the innovation are secured exclusively to the developer. This protection allows a company to create a uniform mobile app experience for its user so they can stand out in the saturated mobile app market.

A patent deters competitors from replicating key functionalities, maintaining the app's distinctiveness. Understanding the ways in which a patent can protect innovations allows developers to focus on further innovation and growth without the constant threat of imitation or copycats. Having a patent as a shield against imitators allows developers to focus on creating instead of trying to outpace others who may copy or imitate the unique aspects of the mobile app, whether that is functionally or as a matter of design. Ultimately, a patent provides a legal framework to defend unique application features, ensuring that original and novel concepts receive the recognition and protection they deserve.

Once an entity has been granted a patent, those who encroach on the invention are likely to be considered infringing actors, who can be sued for this encroachment. Infringement functions very similarly to the idea of trespassing on property, as the owner can demand others to get off their property or face punishment from the law. A patent holder should take immediate action upon discovering those they believe are infringing on their patent. There are a number of different ways to handle these trespassers, putting the potential infringer on notice to stop via a cease-and-desist letter being the first. Once a potential infringer is placed on notice of their wrongdoing and they fail to cease their activity, a court may find willful infringement, which allows the court to award damages up to three times the amount assessed. An alternative route some entities opt for is to seek an agreement to license portions or all of the patentable material so the person is no longer infringing, and the inventor can monetize and realize the value the patent provides.

Moreover, a mobile app patent can significantly impact a company's valuation. Patented technology showcases a robust intellectual property portfolio, attracting potential investors and buyers. This strategic asset plays a vital role in long-term business growth and sustainability. Securing a patent signals to investors and stakeholders that their investment is backed by someone business oriented and forward thinking. It also demonstrates a commitment to innovation and legal protection, increasing the app's market value. Additionally, a patent can open up revenue streams through licensing agreements or partnerships.Finally, if the inventor finds that they lack a use for the patent but would like to monetize the patent in another way the owner can sell the patent to a buyer and assign the rights to the new owner.

Navigating the Patent Process

Seeking a patent, at times, can feel overwhelming, but understanding the underlying goals and  basic principles of the patent process makes navigating it much easier. Every stage, from identifying patentable elements to meeting the numerous filing requirements, plays a vital role in securing an entity’s intellectual property rights. While the journey may be complex, it’s a worthwhile endeavor that empowers developers and entrepreneurs to innovate confidently knowing they will have the exclusive rights to their invention.

What exactly can be patented is often misunderstood; the term patent often invokes imagery of technical drawings in many people’s minds, similar to Fig. 1. While the tangible innovations that society interacts with daily are often considered the primary focus of patenting, this view overlooks a wealth of patentable opportunities. Patents can cover and protect any number of innovations ranging from the bicycle to a method of exercising cats using a laser pointer and the “1-click shopping” business method by Amazon. To better understand what can be patented see Non-Provisional Patent Applications Overview.

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The patent process can be lengthy and challenging, leaving many wondering where to even begin. The first step is almost always a combination of a prior art search coupled with a patentability analysis. A prior art search, in laymen terms, is the process of scouring the public domain for anything that is similar to the innovative nature of the presented idea.This process allows the inventor and the patent attorney to better understand where the invention fits within the current innovative space. In tandem with this, the inventor and an experienced patent practitioner should strategically analyze the invention together to determine the new and novel aspects of the invention and determine the patentable material that needs to be claimed in the patent application.

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Another consideration is whether the invention should be filed as a utility, design patent, or a combination of the two. In general, a utility patent covers the functional or structural components of the invention (e.g., how the invention works or how it is made, See Fig. 5), while a design patent focuses on the aesthetic aspects of the invention (e.g., how the invention looks, See Fig. 3 & 4). Additionally, when filing for a utility patent, the inventor can opt for a provisional patent application. A provisional application has less requirements to file, although many experienced practitioners will file a nearly complete application. This provisional patent serves to establish a priority date, the date on which the innovation has been introduced to the patent office as invented.

The U.S. patent system operates on a "first-to-file" basis. This means that even if a person is the first to invent something, if they do not file a patent application (provisional or non-provisional) before someone else who independently invents the same thing, their claim to have priority is void and will likely be unable to obtain a patent. Under the first to file system, a priority date establishes the inventor's claim to the invention at the U.S. Patent &Trademark Office and can, in some cases, be used even while the invention is being further developed.

While the patent process can be daunting and tedious it creates an opportunity to protect and better understand what the unique and novel features set your mobile application apart. With the help of an experienced patent attorney and a mind towards legal protection, the developer can navigate the process and focus their energy on what they do best, design and create.

Next Steps to Secure Legal Protection

Mobile application developers should consider patenting the novel concepts within their app in order to build a uniform brand, secure the exclusive rights of the invention, and grow value for both the application and the entity as a whole.Innovators should become familiar with the basics of the patent process and consider the wide range of material and options available for patentability to ensure they receive the greatest protection for their inventions.

Lloyd & Mousilli boasts a team of experts in patent and intellectual property law. Let us employ our extensive experience helping early-stage innovators to receive the fullest patent protection over the novel concepts within your mobile application at the earliest date to ensure priority. We have overseen patent strategies for consumer products at some of the largest technology companies and want to share this experience with you. The different teams at our firm, led by seasoned attorneys, work in synergy to help businesses seamlessly weave their patents throughout their broader business strategy. We will ensure that any equity agreements, assignment rights, licensing agreements, non-disclosures, and all other relevant documents accurately reflect the scope and rights regarding your innovations. Our goal at Lloyd & Mousilli  is to help clients accomplish their long-term goals by working closely with them at each stage and tailoring our advice in accordance with the client’s aspirations and needs.

If you are in need of legal assistance, reach out and consult with the Lloyd & Mousilli startup legal team or set-up a free consultation through our website for questions about mobile application patenting or any intellectual property and business legal needs.

The Intersection of SaaS and Patents: Protecting Your Software Innovation

Software-as-a-Service(SaaS) is a cloud computing service model in which access to software is often provided through a web application on a subscription basis. In this manner, the software, itself, is located on external or remote servers, rather than on servers located in-house. SaaS has become a dominant business model for major companies, enabling them to deliver their software products on a subscription basis rather than a one-time flat fee. This creates several advantages for the SaaS provider, by allowing the service provider to reach a broader range of clients as the entry cost is reduced. In addition, under a SaaS model, the long-term profit gains on a single piece of software has a higher ceiling, and the provider can send updates to the client and provide better control and support over their product without requiring an on-site technician or for the client to make a new purchase. As the SaaS market continues to grow, so too does the need for intellectual property protection. Patents can play a crucial role in safeguarding SaaS innovations and providing a competitive advantage.

Software Following the Wake of Alice

There is a common misconception that software and patents are incompatible with one another, or that obtaining a patent on a software-based invention is impossible following the landmark case of Alice Corp.v. CLS Bank Int’l, in which the Supreme Court decided “that the claims at issue are drawn to the abstract idea… and that merely requiring generic computer implementation fails to transform that abstract idea into a patent-eligible invention.”

The impact immediately following this case “led patent examiners to increase rejections based on patent-ineligible subject matter relative to all first office action decisions in affected technologies.” Consequently, this caused a shift away from inventors seeking to patent inventions that involve computers and software.  In an effort to provide some consistency in evaluating software-based invention, the United States Patent and Trademark Office (USPTO) has since issued the “2019 Revised Patent Subject Matter Eligibility Guidance (2019 PEG), [which], had a much larger, statistically significant effect on examination uncertainty, particularly in Alice-affected technologies…. Showing that after one year, the 2019 PEG decreased uncertainty about patent subject matter eligibility determinations in the first action stage of patent examination by 44% for Alice-affected technologies.” This is good news for those in the software industry, particularly the SaaS space.

Understanding SaaS Patents

Obtaining a patent on a SaaS-based invention can be challenging due to the complex nature and distributed architecture commonly involved in these inventions.  In this manner, SaaS patents are often directed to the underlying technology or processes that enable the delivery of the software service to the end consumer. For example, a SaaS patent application can focus on the core processes or unique or novel steps which are performed, either in the cloud or on the client’s machine, to advance the technology and drive the SaaS application. In some cases, if the SaaS product provides a unique user interface or graphical model, a design patent may be applicable to cover any unique aesthetic features that the SaaS program provides, either to the consumer or other users.

Regardless of what portion of the SaaS model or aspect of the business that is trying to be protected, there is likely something that can be considered and analyzed for patentability. A good rule of thumb when deciding whether an invention is patentable, and particularly a SaaS invention, is to ask whether the service is merely taking a known idea and performing it on a computer, or whether the invention is entirely novel or adds some new advancement to the technology or field. Of course, it is best practice to check with a patent attorney who can walk you through the difficulties and nuances of patent law in order to ensure the invention is protected and granted the broadest possible protection.

While a patent may be right for many situations involving SaaS inventions, there may be certain specific instances where treating some portions of the model as a trade secret may be an alternative form of protection. Trade secret protection requires that specific steps are taken to maintain the secrecy and status of the invention as a trade secret. If this is something that seems to better suit the particular invention, check with an intellectual property attorney to ensure the required mitigating steps have been taken to maintain secrecy and legal protection.

Conclusion

Patents can provide significant protection for SaaS inventions, helping to secure market share, deter competition, and attract investors. By understanding the key considerations for SaaS patents and developing a strategic approach, you can maximize the value of your intellectual property and drive your business forward.

Lloyd & Mousilli boasts a team of experts in patent and intellectual property law. Let us employ our extensive experience helping early-stage innovators to receive the fullest patent protection over the novel idea at the earliest date to ensure priority. We have overseen patent strategies for consumer products at some of the largest technology companies and want to share this experience with you. The different teams at our firm, led by seasoned attorneys, work in synergy to help businesses seamlessly weave their patents throughout their broader business strategy. We will ensure that any equity agreements, assignment rights, employment agreements, non-disclosures and all other relevant documents accurately reflect the scope and rights regarding your innovations. Our goal at Lloyd & Mousilli  is to help clients accomplish their long-term goals by working closely with them a teach stage and tailoring our advice in accordance with the client’s aspirations and needs.

If you are in need of legal assistance, reach out and consult with the Lloyd & Mousilli startup legal team or set-up a free consultation through our website for questions about SaaS inventions and their patentability or any of your intellectual property or business legal needs.

FOR IMMEDIATE RELEASE

Houston, TX - July 24, 2024 - Numerous patent service providers may seem appealing at first glance if thorough due diligence is not performed. A quick search for "file patent application" will produce sponsored ads for online providers promoting a quick, easy, and budget-friendly DIY approach to patent filings. However, what is marketed is often not the best option for a startup looking to optimize for long-term growth and investor appeal.

Strategic, attorney-led patent searches and applications can still be efficient. Lloyd & Mousilli, a boutique law firm specializing in intellectual property, technology law, and related litigation, designed its patent practice specifically with startups in mind.

How to Work with Us

(1) Book a free intake call at lloydmousilli.com/calendar
(2) Provide details and context about your business
(3) Electronic engagement letters and flat fee payments

Lloyd & Mousilli Patent Team

Lloyd & Mousilli's patent practice includes seasoned legal counsel with practical experience in startups and small businesses. Founded by Managing Partner, Feras Mousilli, Lloyd & Mousilli's impressive resumes feature positions at companies like Apple and Dell, and the USPTO. Equally important is their experience as small business owners. Patent strategies for startups and small businesses differ significantly from those for larger enterprises, and there is no one-size-fits-all solution. The Lloyd & Mousilli team distinguishes itself by focusing on securing strategic protection in a cost-effective manner.

• Prior Art Searches
• Provisional & Non Provisional Applications
• Office Action Responses
• Patent Licensing
• Patent Litigation

From the prior art search before your application is filed to enforcing your patent registration in court - Lloyd & Mousilli specializes in supporting startups through the entire IP life cycle.

About Lloyd & Mousilli

Lloyd & Mousilli is a boutique law firm specializing in intellectual property, technology law and related litigation. From its founding over a decade ago, headquartered in Houston, Texas, Lloyd & Mousilli has championed the strategic use of intellectual property, counseling businesses from new startups to enterprises.

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Why are Examiner Interviews beneficial?

Examiner interviews are the not-so-secret weapons of patent prosecution. If conducted strategically, an interview with your patent examiner can potentially be the driving force that leads to a successful registration. 

An examiner interview can provide several benefits, including: 

_{‍Clarification}

Examiners are only human; misunderstandings in the written communication between the examiner and the applicant can often be clarified with a face-to-face discussion. Your conversation may unearth information you otherwise would not have obtained. For example, your examiner may have misunderstood your claim as you’ve written them. A verbal explanation may provide the necessary clarity that the examiner was missing. 

_{‍Cost and time reduction}

On average, each Office Action response costs about $3,000. An interview with the examiner can potentially reduce the number of refusals issued against your application, saving you money and cutting down the prosecution time. 

‍When and how can you request an interview?

Once a first refusal has been issued, patent applicants are entitled to an interview with their examiner. There are three ways to submit a request for an interview: 

(1) Fill out a PTOL-413A form 

(2) The USPTO’s online Automated Interview Request (AIR) system

(3) Call your examiner directly to request an interview

‍Tips for a successful interview:

Simply attending the interview isn’t enough; preparation is key. Some ways to prepare for your interview are:

_{‍Prepare an itinerary}

Come prepared. Examiner interviews are typically 30 minutes long - make the most of your time by being as concise and efficient as possible. Prepare an itinerary for your discussion, including all questions and arguments you have for the examiner.

_{‍Ask for input}

An interview allows you to directly request the examiner’s recommendations for improving the claims in your application. For example, making note of the claim language the examiner uses is a strategic way to improve your arguments; they are not likely to reject their own language, so take advantage of this opportunity to receive their direct input. 

‍Ready to take the plunge on a patent application?

Patent applications are tedious and complex. It can take the average person months to learn the ins and outs of patent prosecution. Applying on your own is always a risk, as one small mistake can lead to drastic consequences regarding cost and time delays. 

Lloyd & Mousilli has dedicated intellectual property attorneys who are experienced in the patent application process. We can assist with the preparation and filing of your application, as well as offer strategic guidance on your overall intellectual property protection. 

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Scale of Diffusion Within AI-Related Patent Applications

The AI algorithm’s findings confirmed the general hypothesis that inventors across various technological fields are increasingly filing AI-related patent applications. AI-related patents within the AI-based hardware, vision, machine-learning, natural language processing(NLP), speech, and evolutionary computation fields are increasing, both in number and as a percentage of the total patents filed each year. Additionally, the sophisticated and complex hardware necessary to support the growing integration of AI into these new innovations is directly contributing to the increase of applications for AI hardware patents. According to data presented by AltIndex.com, “back in 2014, there were roughly 30,800 active patent families of the global top 100 owners in the AI tech space. Since then, the total number of active patent families in the AI tech field surged by 940% in the past ten years and hit nearly 320,000.”

AI-related innovation is even being diffused within these large corporations themselves as they are finding more ways to implement AI systems specific to the various product lines, departments, and the many industries with which these corporations engage. Looking at the sheer volume of AI-related patents owned by the top players back in 2020 when the USPTO conducted its study, we see IBM (46,752), Microsoft (22,067) and Google (10,928), at the top, although these numbers have only increased since. This is a clear indication of just how integral and influential these companies view AI technology as being a major factor to their future success. While these larger players are still dominating the AI-related patent space, there is a growing trend of AI-related technology diffusing into small businesses, startups, and even individual inventors. Additional evidence of AI’s significant growth beyond just its initial niche users is the geographical diversity in patent applications. For example, several states in the Midwest have acquired AI-related patents as a part of larger image recognition and data processing technologies created to provide medical care in rural areas. This indicates the shift of accessibility to AI technology that previously saw it limited to geographical areas that were heavy producers of technology, such as Silicon Valley and Austin, Texas.

Impact on Startups & Inventors

Previously, AI was seen as accessible only by larger corporations and as exorbitantly expensive, as evidenced by the number of AI-related patents held by the traditional technology giants. This is no longer the case as AI is permeating every industry and facet of business, in that 82% of business leaders have already deployed generative AI or are intending to deploy it within the next year.  Small businesses and inventors should be mindful of the changing landscape and reflect on how AI could impact their ideas, inventions, and their industry as a whole. AI typically serves to either advance or enhance technology. Often in order to secure early-stage funding, build a successful product, and eventually exit the startup stage, an innovator would need to produce a good business plan. Within that plan, it would be wise to show a clear understanding and strategy for how any AI-related technology or patents would advance or enhance the businesses’ success. Integrating AI into an invention is one way to ensure that investors know the inventor has considered such alternatives and is planning for the future. Even companies with well-established products that currently do not rely on AI must consider the future impact of AI technology on their products and industry to avoid being left behind.

Caution: Do Not Place the Proverbial Cart Before the Patent Horse

Inventors are understandably excited about their new invention; they often feel as though they have just created the greatest thing since sliced bread and the world needs to know about this wonderful new invention right away. While their enthusiasm may be warranted, it comes with a great deal of risk. Without the robust protection that a patent offers, or even the protection a patent application offers, the invention maybe in jeopardy of being stolen or declared ineligible for patentability if the inventor fails to file an application in time. The business side of monetizing an invention can often be a tricky aspect of innovation. Businesses and innovators, be advised, always apply for the maximum patent protection that the invention is eligible for at any given time. This means considering alternative embodiments, uses, technologies, and other factors that may affect the invention now or in the future. It is important to file for patent protection prior to commercialization of the invention. The risk of working toward commercialization without a patent can be extremely risky. Furthermore, if a larger company is looking to acquire or contract with a newer startup, they often require the startup to secure all of the appropriate protection for its intellectual property, especially any patentable inventions, prior to any transaction taking place. Startups can streamline any future acquisition or licensing of their products by filing a provisional patent application to ensure protection for each novel component of their product.

Filing a patent application, or in some cases, a series of patent applications, is a highly complex and detailed process that requires attorneys with both a thorough understanding of the technology involved and the legal know-how to ensure the invention is granted the broadest protection available. A patent attorney will often conduct a prior art search (looking for known or potentially conflicting technologies), draft and amend the patent application (ensuring the broadest language and coverage possible for the invention), and lobby on the inventor’s behalf by responding to and working through any issues raised by a patent examiner at the USPTO. Integrating an AI-related technology into a patent application can make the already bizarre claim language even more complicated to navigate and adds an additional wrinkle into the complexity. This is why it is best to seek the help of a seasoned patent attorney that can efficiently and effectively articulate the underlying algorithm and technology in a manner that satisfies the USPTO’s statutory requirements for patentability.

Lloyd & Mousilli boasts a team of experts in the area of AI-related patents. Let us employ our extensive experience helping early-stage innovators to receive the fullest patent protection over the novel idea at the earliest date to ensure priority. We have overseen patent strategies for consumer products at some of the largest technology companies and want to share this experience with you. The different teams at our firm, led by seasoned attorneys, work in synergy to help businesses seamlessly weave their patents throughout their broader business strategy. We will ensure that any equity agreements, assignment rights, employment agreements, non-disclosures and all other relevant documents accurately reflect the scope and rights regarding your innovations. Our goal at Lloyd & Mousilli is to help clients accomplish their long-term goals by working closely with them at each stage and tailoring our advice in accordance with the client’s aspirations and needs.

If you are in need of legal assistance, reach out and consult with the Lloyd & Mousilli startup legal team or set-up a free consultation through our website for questions about AI-related patents or any of your patent needs.