The prevailing practice in the patent profession is to file the claims the client asks for, or the claims the attorney believes are defensible. The next step is to have the examiner tell us, which in the usual course of things will not happen until two or more years later, whether those claims were ever allowable.
I have come to believe this is exactly backwards, and that the question every business leader ought to put to his patent team before authorizing the next filing is a simple one: do you KNOW these are grantable patent claims, or are we just hoping that they are? If the answer you get from your attorney is the second one, you are committing to a journey that may never get to the destination that you are looking for: a broad patent that creates meaningful value for your business.
Why would anyone pay what are often exorbitant prices for “might be granted” or “worth a try” when nearly-certain-to-be-granted claims can be on the table instead? The different has nothing to do with attorney “competence”–the patent bar is full of careful and conscientious people. Success has everything to do with how patent work is bought and sold: my profession gets paid to take clients on the patent journey without ever being obligated to deliver them to the patent destination. Hours accrue whether the application issues or dies on a final rejection, and your engagement letter almost certainly says nothing about allowance. I cannot fix that disconnect, but I can make certain you know it exists.
Knowing the path is right requires doing the work FIRST, which means defining your business goal, identifying the prior art obstacles already sitting in the path, and building a path aimed at obtaining patent allowance quickly and at the lowest available cost. And there is the rub. You have to spend a little time and money before you embark on a journey that is expensive to start, more expensive to finish, and notoriously hard to abandon once the invoices have piled up, which is how a great many hopeless applications stay alive well past the point at which any rational owner would have quit.
Do the planning first and you may well learn that your most likely path is blocked, but that a different route delivers the same commercial outcome. Or you may learn that somebody already beat you there, which saves you the entire fruitless spend. Wouldn’t you rather know that before the money is committed rather than three years and several office actions later? Nonetheless, the pre-work is the line item clients most often decline.
I recently helped a startup innovator with a proven business model map a five-plus patent portfolio for issuance in under two years, in a filing space that is exceedingly crowded. We used AI with expert-generated prompting, and we did not stop at the available “whitespace,” which is where this analysis usually ends. Instead we stood the client’s entire innovation roadmap up against the competitive patent landscape to see what could be owned now and what could be owned later. The deliverable was a prioritized, actionable list of patentable subject matter: what to file immediately, what to hold, and what three or six patents would cost inside the window allotted for the build.
Two years ago that analysis would have taken me weeks, and this client almost certainly could not have afforded it. It took under ten hours. This is the change happening in real time, and it is not the one my profession talks about most, which is how much faster an attorney can now produce a first draft. Certainly that matters. However, the far more consequential shift is that rigorous pre-filing analysis has become cheap enough to do as a matter of course, which means filings can be both more likely to issue and better aligned with what the business is actually trying to own. This is not to say the software does the work; expert judgment builds the prompts and reads the output, and AI in untrained hands produces confident nonsense at impressive speed.
In short, before you authorize your next filing, ask your patent team whether they KNOW the claims are likely grantable or whether the plan is to find out from the examiner. If they cannot answer in the affirmative, you should probably look for someone else to guide the journey. Full stop.
Feel free to reach out if you would like to talk about what that analysis looks like for your portfolio.