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As an engineer, I need to ask the right questions of counsel because they are very busy with other projects. My project is blessed with fine attorneys, however, it is up to me to submit the application to the USPTO. Although I have the experience with the mechanics the how of .pdf .docx, I anticipate needing assistance with qualitative matters such as:

We are approaching the deadline to file, so we are making a 'final-push' to produce the best possible NPA submission. My 'spider-sense' tells me that is that there are other questions that I should be other questions, however, this is my first patent attempt and I should consult the wisdom of the community (preferably those who have submitted patents successfully to the USPTO).

What other questions should I be asking the attorneys to enable the best possible outcome? The first two questions above are NOT questions that I seek to have answered in this thread, but examples of questions that should and have been asked.

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    Could you please edit your question to fix the several mistakes? It makes it hard to understand. – Eric Shain Apr 12 at 14:22
  • Is it being written and submitted by a patent attorney? – George White Apr 12 at 18:50
  • The patent attorney is writing the application. I own the EFS web submission of the application package. @EricShain: thanks for the helpful feedback. – gatorback Apr 13 at 2:17
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    It is odd that professionals are drafting the application but you are submitting it. Normally they would take the responsibility of correctly filing the package. There are ways to screw it up if you do it yourself. Dangerous near a deadline. The effort for a professional to file it is trivial compared to drafting the application - why not have them do it and hold them responsible? – George White Apr 13 at 6:23
  • I agree with George White, have the lawyers do the filing. It’s the only sane option. – Eric Shain Apr 13 at 13:37
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Since you have are working with "fine attorneys", then they are responsible for ensuring the correct documents are filed and those documents are correctly filled out. It is frankly ridiculous for you to infer that qualified patent attorneys need help from the inventor with the mechanics of filing a patent. As your edits indicate you are responsible for the filing, I’ll have to defer to others on the mechanics of filing as I’ve always worked with attorneys on my patents.

As for what I think you should consider is the technical content of the patent. In particular you should assess whether the patent is sufficiently broad to cover all conceivable implementations of the invention. You can help this along by carefully reading the specification and claims and asking yourself whether you can think of ways of avoiding infringement. If you can, then you should try to broaden the scope to cover those alternative implementations. These alternatives need not be the ideal or preferred implementation or even function as well.

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