What technical invention information should you provide for filing a utility patent app?

What technical invention information 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 technical 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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Frenda Williams
Frenda Williams
I have had the pleasure of working with Vic and his team at Innovation Capital Law Group on Trademark creation and contracts. As a solo and non-tech founder, the assistance, guidance and recommendations from Vic and his team have been INVALUABLE. And, with the knowledge that I have a Solid, well versed and caring legal team I can turn to, I have the confidence I need to navigate the intricacies of the tech industry as a solo founder. With that being said, If you’re a startup and you’re looking for a legal team that speaks your language, knows the industry and makes you feel like family…. Innovation Capital Law Group is a Perfect fit for you, your company and your team. Five out of Five Stars… don’t let their brilliance blind you 😁
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Shiwei Liu
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Chang Chien Michael
Chang Chien Michael
I have worked with iCap for more than 7 years. I am very glad with his professional knowledge that 7 utility patents were granted by USPTO. Vic and his team are very efficient and knowledgeable. Every time he can transcribe my design idea perfectly in two weeks and file it with no rejection from USPTO. The other service including the granted patent following up is always in time to remind me to take actions. That is why I still stick on iCap as my first priority when I want to file a US patent.
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InPlay Inc
InPlay Inc
Vic and his team have been providing us with the best patent application experiences we could ever have in our entire career life! Their professionalism and technical knowledge have really saved us a lot of communication effort and time on the applications. Definitely highly recommend if anyone is looking for help with IP protection for their business.
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Meg Crowley
After working with Vic and his team at Innovation Capital Law Group, our organization is confident our trademarks were solid and protected. Thank you team.
Andy Dong
Andy Dong
I have been using Innovation Capital Law Group for a few years and continue to use them. They have provided an excellent services on our legal issues including intellectual properties and patents . They are very responsive, easy to work with and very competent . I highly recommend them.

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