Topic list: Core questions for every invention. Section 101 and optimize language. Written description for a family of compounds or structures. Process ranges. Hardware near standards. Provisional timing. Marking and licenses. Closing questions.

Search tags: #faq #inventors #intake #drafting #section101 #written-description #claim-construction #obviousness #provisional #marking

Core questions for every invention

Ask what is broken today, who feels the pain, and how they know. Ask what the inventor changed, in one plain sentence. Ask which parts or steps must be there for the idea to work. Ask which alternatives failed and which ones still work. Ask what prior products, papers, or patents they know, and how theirs differs. Ask whether they built it, simulated it, tested it, or only thought of it. Ask who contributed which piece. Ask about any talk, sale, offer, or public post and the dates. Ask what will ship and what is only a lab option.

What to do with the answers: Write them down in the inventor's words first. Then turn the must-have parts into claim ideas, and turn the failed alternatives into specification support.

Extra module: Section 101 and "optimize" language #section101

Why this matters: Constellation Designs v. LG shows that claims about optimizing a result can fail if they never lock in a concrete structure or process.

Ask whether the advance is a goal, like "runs better," or a concrete structure or process. Ask them to point to the specific output they invented, such as a layout, table, circuit, or geometry. Ask which steps create that output. Ask what remains if you delete the word optimize.

A weak answer is "It just works better." A stronger answer is a sketch of the exact arrangement or process they would put on one page.

Extra module: Written description for a genus #written-description

Why this matters: Exelixis v. MSN upheld description of a crystalline salt family where the patent named the chemistry and said the form was crystalline.

Ask what structure every member of the family shares. Ask how many versions exist and which ones they actually made or fully described. Ask whether they are claiming a function or a structure a skilled reader can picture. Ask what process or test details belong in the write-up.

A weak answer is "Anything that gets the result." A stronger answer names a clear shared structure and gives an honest sense of how wide the family is.

Extra module: Process ranges #claim-construction

Why this matters: Biofer v. Vifor (nonprecedential) read a pH range as something that had to stay in place for the whole step.

Ask, for each range, whether it must hold for the entire step or only at the start, the end, or some moment. Ask how they measure it. Ask what happens if it drifts. Ask whether the claim should say the value is maintained throughout the step.

A weak answer is "We run around pH 8." A stronger answer says whether they hold the range the whole time or only set it once.

Extra module: Hardware near industry standards #obviousness

Why this matters: The Netlist v. Micron appeals focused on which part of a memory module actually did the inventive control.

Ask which component does the clever work. Ask where it sits relative to the host, connector, memory, or control die. Ask which signal it uses and who reads that signal. Ask what the standard already requires. Ask whether interconnect lengths must differ if load matters.

A weak answer is "The module is smarter about latency." A stronger answer says which chip uses which number to turn which path on.

Extra module: Provisional timing #provisional

Why this matters: Dental Monitoring v. Align requires a provisional to support at least one published claim before the provisional date counts for that reference.

Ask which claim ideas need today's date. Ask whether the current write-up really supports those ideas, or only nearby ideas. Ask which figures or examples must be in the provisional now.

A weak answer is "We will tighten the claims later." A stronger answer describes the claim-shaped version the provisional must carry today.

Extra module: Marking and licenses #marking

Why this matters: VDPP v. Volkswagen makes licensee marking important if you later want damages from before a lawsuit.

Ask whether the company or its licensees will make or sell products that use the claims. Ask whether licenses will require marking and audits. Ask whether anyone wants a settlement term that waives marking.

Closing questions

Ask what you forgot to ask. Ask what a skeptical competitor would call obvious. Before you leave, ask the inventor to draw a one-page diagram, flow, or structure.