What technical information about your invention should you send to your patent attorney for filing a utility patent application?

When you’re ready to move forward with a utility patent application, you will need to provide sufficient technical information to enable your patent attorney to understand your invention. We often receive questions regarding the amount of information and the level of detail required.

To draft the patent application more efficiently, it helps to have the following technical information upfront:

  1. Drawings showing each preferred version of your product or process; and
  2. Written descriptions elaborating on each key feature of your product/process and explaining any differences between the versions.

Feel free to ask us for our Invention Disclosure Form that presents pertinent questions to help you flesh out details of the key features of your invention.

Old vs. New: Technical information on unique features

There is no need to provide a great deal of background information, such as what is already known (prior art) or the applicable industry and applications. Simple succinct statements regarding the background will suffice. The focus of your disclosure should be on the unique features that you believe makes your invention different.

Is a patent search required before filing a patent application?

No, you are not required to search the prior art before filing a patent application. But a search can be useful. While we do not need extensive information on the prior art, it helps to know where to draw line between what is old and what is new. A patentability search can reveal what has already been done before, thereby providing guidance on what might possibly be unique.

Ranking the priority of features

Some sets of features may be more important than others. If that is true of your invention, you should identify the priority of the feature sets. Identify those features that are critical and primary versus those that are optional or secondary. This hierarchy of significance will guide your patent attorney in drafting independent and dependent claims.

One helpful way to pare down your concept to the core features would be to ask yourself: What is the minimal combination of key features in a product or process that you would want to block competitors from selling?

Visualizing your invention with images

Visuals help a great deal. Make sure to provide drawings, photos, diagrams, and basically any visuals that show what your concept looks like and how it would work. Your drawings need not be professional as your patent attorney will be able to find patent illustrators to prepare formal patent drawings. Any images that can help the patent attorney to visualize your invention will be useful.

Describing your invention with words

You should also supplement the visuals with detailed written descriptions that expand upon the key features.

For mechanical inventions, your written description should specify structural features and how the device operates differently from existing products.

For methods or processes, you should specify any unique steps that distinguish your methodology from known techniques. If your process skips a step, elaborate on how you were able to accomplish the omission of a step that had always been required in the prior art.

For software (e.g., mobile apps), it helps to have a flowchart of the overall process along with written descriptions that elaborate on the steps in the flow diagram.

Is a prototype required?

No, you do not need to have a prototype in order to file a utility patent application. That being said, you still need to be able to help your patent attorney visualize and describe the invention so that adequate descriptions, drawings and claims may be prepared.

Checklist of invention information to send to your patent attorney

To sum it up, here’s a checklist of technical information on your invention to send to your patent attorney for drafting a utility patent application:

  1. Visuals (drawings, photos, diagrams) of each version of your concept
  2. Outline of key unique features and priority of feature sets (what minimal combination of features would you want to stop competitors from doing?)
  3. Written descriptions that elaborate on each key feature
  4. Patentability search results, if any
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Vic Lin

Vic Lin

Startup Patent Attorney | IP Lead Partner at Innovation Capital Law Group
If you are a startup or small business, we want to help. Our mission is to equip entrepreneurs with solid IP rights that facilitate funding, growth and sales. Let's get to work! Direct: 949.223.9623 | Email: vlin@icaplaw.com
Vic Lin

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