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Managing Patent Application Cost: 20 Questions Every Inventor Should Be Prepared to Answer

A major factor in patent application preparation cost is how much time the attorney needs to
spend getting information from the inventor or looking it up. Often, a well-meaning inventor will
provide a substantial amount of information to their patent attorney, but much of it will be irrelevant or
require significant "sifting through" extraneous information by the attorney to find the information that
they really do need. Additionally, that effort can lead to inefficient excess communications with the
inventor to help sort things out and that also increases the inventor's cost. That extra time spent, almost
never translates into value for the inventor either, despite potentially increasing the cost of the patent
application's preparation. A well-prepared inventor can reduce that time considerably and, in doing so,
can help control his cost. Below are 20 key questions that every inventor should be able to answer,
ideally before their initial meeting with their patent attorney. The greater the detail an inventor can
provide in answering each, in terms of references, write ups, pictures, drawings, etc. the more useful
the answers will be to the patent attorney who will prepare the patent application. In addition, the
answers should be available irrespective of whether the inventor is considering filing a provisional
patent application or a non-provisional patent application.
By fully and completely answering each of the questions in detail, the inventor will be
providing their patent attorney with the bulk of information that they truly need to prepare a patent
application. As such, the attorney can spend their time drafting the application and not have to
needlessly wade through lots of irrelevant information or spend countless hours figuring out what
additional information they may need and then try and get it, so further communications can easily be
limited to targeted and productive "gap filling" discussions only when (or if) needed.

1. What is your ultimate business goal in obtaining a patent for your invention?
Patenting is an expensive and multi-year process and, sometimes, inventors try and seek a patent for
their invention when it is ill advised to do so. Some inventions can be maintained, and are best
maintained, as trade secrets. Other inventions may have a sufficiently short "life" that, by the time a
patent issues, the industry will likely have moved on to other technology. In other instances, the
inventor may believe that, if they get a patent, licensing requests will come rolling in - which is
virtually never the case. The obtaining of a patent is a business tool that can be used to further a
business goal. Unless the inventor is a narcissist with money to burn, there is little to be gained by
obtaining a patent as an end unto itself. Moreover, a good patent attorney will work to ensure that the
preparation of the patent application is in line with the inventor's business goals, but to do so, they need
to know what those goals are. Every individual inventor or small business should be wary of a patent
attorney (or patent agent) who does not ask about business goals for the patent, should one issue, or
provides any kind of assurance that protection can be obtained. In either case, there is a good chance
that any patent that is obtained will lave little to no actual value to the inventor or anyone else.

2. What is the current broad technical field(s) within which your invention can be used?
This information is helpful because it forces the inventor to focus on those areas where the invention
might be used and how broadly its application might be.

3. What is your key target market demographic for a product containing the invention and
why?
While a patent application should broadly be directed to all potential uses of the invention, knowing
who the likely main customers/users are will help the attorney decide the best ways to claim the
invention.

This article is intended to be of a general educational nature. It is not intended, nor should it be taken, as legal advice. For
specific legal advice relating to a specific matter, an attorney should be engaged.

© 2015, 2019 Richard Straussman, Esq., All rights reserved.


4. What problem(s) were you trying to solve that led to your invention?
Lets face it, an invention that does not solve a problem will have little to no commercial value to
anyone. Something led the inventor to do the work that led to the invention. Again, this may influence
what is claimed and how.

5. What problem(s) did you actually solve?


How many times have we heard of inventions that sought to solve one problem but actually solved
another. For example, Rogaine (minoxidil) was originally intended for treating high blood pressure but
had a side effect of growing hair. The invention, once created, may have solved multiple problems that
each merit protection, even though it initially only attempted to solve one.

6. What was done by others (or you) to address the problem(s) BEFORE you created your
inventive solution?
This can influence how the invention is presented in the patent application and may indicate how truly
patentable the invention is. Failure of others to solve the problem the invention solved can be a
powerful indicator of "non-obviousness" (which is one of the requirements for getting a patent.

7. What evidence (articles, websites, products, etc.) do you have that document the
problem(s) and prior solution(s)?
This information may be needed by the patent attorney as evidence to convince the Patent Examiner of
the patentability of the invention. Attorneys can argue to the Patent Office that the invention satisfies
the requirements for a patent, but that argument is not evidence and, thus, need not be convincing to
the Patent Office without evidence to back it up.

8. Which of the prior solutions are closest to yours and why?


Patentability is judged relative to what came before, in print or otherwise, which is called "prior art"
and the inventors must disclose the prior art that is closest to the invention (as well as all other
"material" prior art) to the Patent Office. This includes your prior work as well as the work of others.

9. What are the similarities and differences between your solution and the prior ones?
This information will help the patent attorney focus on the unique features of the invention, during
patent application drafting, to avoid spending undue time on the conventional aspects and to better
claim the invention as broadly as they can, and, during prosecution, to help convince the patent
examiner of the patentability of the invention.

10. How does your specific solution address the problem?


For example: "My invention accomplishes {your solution to the problem} because {it has/it does}", or
"My invention results in these «benefit(s)» when {_______________ is done} because {it has/it
does}". A patent application must enable others with the appropriate skill to make and use the
invention for its intended use. Thus, detailed answers to this question will help ensure that the
information provided by the inventor is complete and will also highlight the advantages and/or features
that the attorney should be considering when crafting the claims.

11. What makes your invention new, over and above the fact that you have never seen
something like it or read something describing anything like it before?
An additional requirement for obtaining a patent is that the invention be "non-obvious" relative to the
prior art. Thus, while the inventor may not have seen the same thing, what they highlight as "new" may

This article is intended to be of a general educational nature. It is not intended, nor should it be taken, as legal advice. For
specific legal advice relating to a specific matter, an attorney should be engaged.

© 2015, 2019 Richard Straussman, Esq., All rights reserved.


not overcome the obviousness issue. The answer may help the patent attorney evaluate and account for
the non-obviousness of the invention. For example, if the invention is a spoon with small teeth on the
end and a sharpened edge on one side of the spoon or part of the handle, making it a spoon-fork-knife
combination made from metal, even though the inventor may not have seen that exact thing, as a legal
matter, the patent attorney will be better able to anticipate and impliedly address a potential
obviousness rejection in the drafting of the application and claims, if what is new is that the inventor
took a metal "spork" and merely sharpened an edge to add the knife function.

12. If you have more than one solution, is one better than the others for any reason or better
for one purpose, but another better for a different purpose, and, if so, which one and why?
Patent claims are what provide the legal protection the inventor gets, not the description portion,
although the two are inextricably linked. Oftentimes, different solutions may indicate different
potential types or classes of users and, as a result, potentially may require different claim types to
provide adequate protection.

13. How did you come up with the solution?


This information will help the patent attorney better understand the problem and may identify
other inventions that the inventor did not realize they had made and that could be valuable. For
example, in achieving the ultimate "invention" the inventor may have solved other problems that
were an impediment to them but otherwise were not germane to the end goal. If the inventor had
that problem, it is likely that others may have as well, and that solution may have broader
application or more value than the inventor's end product. For example, if the inventor was trying
to make a component for their ultimate product out of molded plastic and encoundered difficulty
in making the shape mold properly, a clever fix to that problem would have broader application
to others than the particular product the inventor was trying to make - and might be far, far more
valuable as a result.

14. What components are used to achieve each solution or implement your invention and
how do they work together to do so?
This relates to the specific details involved in implementing the solution. The patent attorney needs
sufficient information to ensure that the requirement that others be able to make and use the invention
(called the "enablement" requirement) is met by providing the appropriate detail in the patent
application (called the "written description" requirement).
Contrary to popular misunderstanding, one does not patent an "idea," one gets patents for a class of
implementations of the idea. For example, an inventor can't patent the "idea" of teleportation, but the
inventor can get a patent on any device(s) and/or method(s) that make teleportation possible.

15. Are all of the things you identified as used to accomplish your solution, actually
necessary to accomplish your solution?
This information will help the attorney formulate the claims of the patent application. It is very helpful
if an inventor can make the distinction between what is required to make the invention work at all
versus what may be required to make the invention be commercially acceptable or practical. In crafting
the broadest claims of a patent application, the attorney will be trying only include the barest minimum
elements, and will include the "good to have" or "needed for commercial acceptance" aspects in
dependent claims. For example, a particular mixture of chemicals may work well as a cleaning liquid,
but it may have an unappealing feel, color and/or odor. As such, the inventor may have added some
other components that alter one or more of those properties to make them more acceptabe, but they are

This article is intended to be of a general educational nature. It is not intended, nor should it be taken, as legal advice. For
specific legal advice relating to a specific matter, an attorney should be engaged.

© 2015, 2019 Richard Straussman, Esq., All rights reserved.


not essential for the mixture to do what is necessary, i.e., clean. The basic mixture is what would be
claimed in the independent claim, and the other additives would be added by way of dependent claims.

16. Are there other ways to achieve the same solution, even if they may not be as good,
may cost more, or may have some disadvantages?
Most inventors can tell what they created, but are unable to discern what the full scope of their
invention might be. They often have a very narrow view of what the full scope of the invention really
is. Thus, one of the key things that an inventor really pays their patent attorney for, is to seek to protect
against others who will not duplicate the invention exactly, but rather will make versions that are
facially different, but merely actually include minimal changes that still allow them to get
some/most/all of the benefits of the invention. The more an inventor has put on their competitor's
"thinking cap" and considered the question - "If I was my competitor, what changes could I make to
the invention that would still allow me to achieve the same or a similar result, but say that I have
something different?" - and conveys the answers to their patent attorney, the better the patent attorney
will be able to discern what the full scope of the invention might be and work through how best to seek
the appropriate scope of protection in light of the known prior art. In doing so, they still might not be
able to protect against all such possibilities, but they may be able to obtain protection such that the
alternatives that someone could use without running afoul of the patent are not commercially viable for
some reason.

17. Have you in any way made the invention known to any person (outside your company if
you have one) and, if so, who, when, and under what circumstances?
This is important because the United States (and foreign countries) place strict limits on what can be
disclosed about an invention, and when, prior to the filing of a patent application. Thus, the answer
may affect where protection can be sought, whether protection can be sought anymore, or how quickly
an application must be filed before potential rights may be lost. If the invention was disclosed or in use
for too long, the patent attorney may not be able to seek protection for it at all. It is better to know that
BEFORE an application is prepared and/or filed, than to waste time and money for something that
cannot legally be protected anymore. Some countries work on the basis of a concept called "absolute
novelty," which (in the simplest case) means that if the invention has been disclosed to anyone,
anywhere, then obtaining patent protection is foreclosed there. The "absolute novelty" rules are not
necessarily the same from country to country, and many have certain exceptions, so it will be
important for your patent attorney to know the answer to this to advise (or seek advice from their non-
U.S. counterparts) regarding the impact of such disclosure on the timing and ability to seek protection.
Likewise, under the America Invents Act revisions to the patent laws, certain activities of others even
one day before your filing date can impact your ability to get protection.

18. Is your invention currently in commercial use by anyone you authorized and, if so, by
whom and for how long, or will it be commercialized (by or for you) in the near future?
This will allow the patent attorney to make sure that the claims of the application actually cover what
is being commercialized and make sure, to the extent possible, that subsequent actions during the
process of obtaining a patent (called "prosecution of the application") do not inadvertently exclude
coverage of those commercial products.

19. Are there other commercial uses that you do not presently plan to implement, but that
you or someone else might want to implement in the future and, if so, what are the other uses?
Again, inventors tend to focus on their intended market and ignore other potential uses outside their

This article is intended to be of a general educational nature. It is not intended, nor should it be taken, as legal advice. For
specific legal advice relating to a specific matter, an attorney should be engaged.

© 2015, 2019 Richard Straussman, Esq., All rights reserved.


"core" business. However, if an invention is successful in one field, there may be others who may want
to make use of it in other areas. That is the best scenario for generating revenue from licensing -
particularly where the other potential users are in an area that is significantly removed from any
business area the patent owner is likely ever to otherwise be in. Knowing this, can help the patent
attorney potentially craft claims with licensing in mind, or may affect how a filing is handled, for
example, it may be best to file two or more applications directed to the different potential uses or use
different types of claims based upon who and how the invention may be used by other non-competitve
businesses.

20. What type(s) of entit(y/ies) would most likely use your invention (i.e., a manufacturer,
an importer, a repair facility, an end user, etc.) and how would it be used?
This goes to "detectability" of the invention and who should be "set up" as a potential infringer. The
patent attorney will generally need/want to consider how use of the invention by others will be
"detectable" - which can vary based upon the type of user. If the use of the invention by others cannot
be detected, how can an inventor seek to stop its use or collect a royalty? Likewise, the patent attorney
will generally want to craft claims such that they will likely be infringed, if by anyone, by an entity
with money to pay for its use. The last thing an inventor wants to hear when contemplating an
infringement case (in the most extreme circumstance) is that only the end users are infringing, so each
would have to be sued individually and that the damages from each won't even cover the cost of
preparing the individual complaints. Ideally, in many cases, one wants to be able to sue the
manufacturer, not the end users. In other cases, it may be better to have the infringer be an entity
further along the distribution chain. For example, the royalty from a manufacturer for the sale of an
item incorporating the invention may be dwarfed by the royalty that can be had if the purchaser is a
commercial entity that rents the invention out, and each rental is an infringement.

This article is intended to be of a general educational nature. It is not intended, nor should it be taken, as legal advice. For
specific legal advice relating to a specific matter, an attorney should be engaged.

© 2015, 2019 Richard Straussman, Esq., All rights reserved.

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