What to Check Before You File

Most of the money wasted on patents is wasted before the application is ever drafted. An inventor discloses the concept at a trade show, files fourteen months later, and loses foreign rights entirely. A contractor writes the firmware and never signs an assignment. A claim set gets drafted around a prototype that the production version will not resemble. None of those are legal errors in drafting — they are preparation errors, and they are all avoidable in an afternoon.

This is the checklist to run before you authorize a patent attorney to start drafting. It does not replace legal advice; it makes the legal advice cheaper and better informed.

1. Has the invention been publicly disclosed?

The United States gives inventors a one-year grace period under 35 U.S.C. 102(b) for the inventor's own disclosures. Almost no other country does. A pitch competition, a crowdfunding page, a published paper, a booth at a show, or an offer for sale all start that clock — and simultaneously destroy novelty in Europe, China, and Japan immediately.

Write down every date on which anyone outside an NDA saw or was offered the invention. If any of them is more than eleven months old, this is now urgent. Public disclosure and the one-year grace period covers exactly what counts as a disclosure and which conversations under NDA are exempt.

2. Has a real prior art search been done?

Not a Google search for the product name. A classification-based search of granted patents, published applications, and non-patent literature in the relevant CPC subclasses. The point is not to prove you are the first — the point is to let the attorney draft claims that already step around the closest references, which saves one or two office actions later. How to run a prior art search before filing walks through the method.

3. Is the subject matter patentable at all?

Abstract ideas, laws of nature, and natural phenomena are excluded under 35 U.S.C. 101 as interpreted by the Alice line of cases. If your invention is a business process, a data-analysis method, or a mobile app feature, this is the gate that will decide the case, and it deserves an eligibility opinion before drafting starts. Physical mechanisms, circuits, materials, and manufacturing processes rarely have a 101 problem.

4. Is the inventorship correct?

US patents require the true inventors, all of them, and only them. An inventor is someone who contributed to the conception of at least one claim — not the person who funded it, not the machinist who built it to your drawing. Naming the wrong people can invalidate the patent. If two or more people conceived parts of it, read how co-ownership of a patent actually works before you file, because by default each co-owner can license the whole thing without the other's consent.

5. Is the ownership chain clean?

Inventorship and ownership are different things. Confirm you hold signed, recordable assignments from every named inventor, that employees' invention-assignment agreements are on file, and that any outside engineering firm, freelancer, or design consultancy has assigned rights in writing. Default US copyright and patent rules favor the contractor, not the client. Who owns IP a contractor creates for you is the article to read before you assume.

6. Is the invention enabled and described?

Under 35 U.S.C. 112, the application must teach a skilled person how to make and use the invention, and must describe what you claim to have possessed. Practically, that means before drafting you should have:

• Working dimensions, tolerances, and materials — not just a concept sketch
• The operating ranges you want to claim, with data supporting the endpoints
• At least two or three alternative embodiments, so the claims are not locked to one shape
• Drawings that show every claimed feature with reference numerals

Thin disclosure is the most expensive mistake in the process, because you cannot add new matter after filing: whatever the specification fails to describe is gone for good.

7. Do you know what you want the claims to cover?

Come to the drafting meeting with an answer to one question: if a competitor wanted to copy this and avoid your patent, what would they change? Whatever you answer is the thing that must be outside the independent claim, and the surrounding variations belong in dependent claims. How patent claims work covers the structure.

8. Provisional or non-provisional?

A provisional buys twelve months of priority and the right to say patent pending, at a fraction of the cost. It is the right move when the design is still moving or demand is unproven. It is the wrong move when it is filed as a two-page description that fails 112 and therefore supports nothing. Filing a provisional application properly covers the difference between a placeholder and a real priority document.

9. Confirm entity status and budget

USPTO fees drop by 60 percent for small entities and 80 percent for micro entities. Micro entity status has income and prior-filing limits and requires a signed certification, so verify eligibility rather than assuming it: the micro entity qualification rules spell them out. Budget for prosecution and one continuation, not just filing.

10. Decide the foreign filing plan now

You get twelve months from the priority date to file abroad or through the PCT. That deadline arrives faster than the market data you were hoping for, and missing it is unrecoverable. Decide in advance which countries matter, using manufacturing location and revenue concentration rather than instinct — which countries to patent in covers how to narrow the list.

The one-page version

Projects House is an engineering firm, not a law firm, so the filing itself belongs with a registered patent attorney. What we contribute is the technical half of the checklist: the dimensioned design, the alternative embodiments, the test data, and the drawings that make an application enabling instead of aspirational. If you are approaching a filing and the engineering record is thin, describe the invention through our contact form.