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(Motivation)
I asked this question:
Patent Enablement - how do you balance retention of secrets and teaching make and use

(Rough Question)
In the comments the question came up:
What is the best (or at least very very good) way for a technical expert to document their work and set up for the patent attorney to have the best success?

(Why to not close it before reading)
While opinions can be had, there are some realities that make objective answers both reasonable and important.

  • Any patent attorney can tell you about "the ugly", the staging that makes it hard, has critical gaps, or such. A clean and organized of those is the evil-twin of a good way to set up for success.
  • USPTO tries to provide resources to make things work better for their reviewing personnel, so something that improved the quality of content a reviewer needs to make an evaluation, all else being equal, would also be good.
  • The successful "patent your idea" companies have to have some forms and basic processes that set up their work for ease of productivity. This means that at least for the application process, they have an idea of what makes things work better or worse.

(Detailed Question)
Can you provide a rubric, a checklist, or guidelines that either help clarify what a superb "tee-up" of a patent applicationfor a patent attorney should have?
If not that, what few things if they are done that way make things very difficult and unpleasant for the attorney? I'm not looking at invalidating the patent by disclosing it improperly or such, but in terms of documentation and staging what things make the job less easy, efficient, or effective.
This should include things that make the patents substantially stronger and more defensible as "good" things and, and things that without malicious intent can substantially weaken the quality or viability of an otherwise plausibly novel, useful, and non-obvious patent idea as "bad things".

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    This question is perhaps a bit broad, but I'll attempt to answer. It's breadth, however is going to cause me to take some time in drafting an answer.
    – Eric S
    Jun 13, 2023 at 21:14
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    I've posted an answer. It is a bit stream of consciousness. Hopefully you find it helpful. Post comments if you feel I'm missing something or if you need me to clarify anything.
    – Eric S
    Jun 13, 2023 at 22:06
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    I recommend the answer EricS posted. Separately a few points — invention submission companies are mostly scams or borderline unethical operations so their internal processes are not helpfully. The patent office helps examiners by training and close supervision initially as well as good search tools. Also not helpful to you.
    – George White
    Jun 15, 2023 at 5:29
  • @GeorgeWhite - In the stats SE group there are a few intermittent "grumpy old kung-fu masters" that would pop on and give just stunningly awesome answers. They were a few days between, so I learned to wait a few days before accepting the answer. Sometimes a new entry would say something that an old one didn't. Good stuff. Jun 15, 2023 at 17:37

1 Answer 1

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The bulk of my career was spent working for a medical diagnostics company. Because I worked with life scientists, the culture there was to document work in laboratory notebooks. Paper initially and eventually electronic. I found the discipline of formal documentation during development helpful when providing material to patent attorneys. In any case, I will try to capture items I found were useful in the process of drafting and prosecuting patent applications with attorneys. These are in no particular order.

  • If you have a choice in selecting a patent attorney, try to find one who is experienced in technological field of the invention. Ideally the lawyer will have a relevant technical background.

  • I found the process of writing a document describing the background and description of the invention generally worth the effort. This is especially true if you are paying the lawyer yourself. Don't expect any of your work to end up verbatim in the actual patent application. Patent lawyers draft applications with legal requirements in mind. Do not bother to draft claims. They won't be used and will just waste your and your lawyer's time.

  • Provide the lawyer with copies of all technical documentation you have. Lab notebooks, emails, presentations to management, whatever.

  • If you have done any prior art searching, provide everything you found that is even remotely similar. Explain how your invention is different.

  • Your lawyer will probably do a prior art search. You can help them review the results to refine the search parameters and to interpret found documents.

  • If you are aware of similar technologies or products provide them. Explain how your invention is different.

  • Think hard about how your invention works. What is the best mode? What is the essential core of the invention.

  • Brainstorm every permutation of the invention you can think of. It doesn't matter if some of those versions are less efficient. If you work in an organization that has other engineers, include them in the brainstorming. If someone else comes up with a useful twist on the invention and gets included as a co-inventor, that is great. You will get a better patent because of it. Having a co-inventor does not dilute your efforts in the least.

  • Be prompt and thorough reviewing drafts of the application. If is important that you fully understand the specification. Feel free to ask the lawyer why things are written the way they are, but try not to be argumentative. Patent attorneys usually have a good reason for write the spec they way they do. This is especially so with claims.

  • When reading claims, pretend you are a competitor trying to design around them. If you can implement something without a step in the claim then there should be a claim without the unnecessary step.

  • During the prosecution of the application, expect at least one rejection. Don't panic, this is normal. Many times the examiner is just wanting a little help understanding why some bit of prior art isn't really relevant. Many times it is just a matter of adjusting the claims. This is where your attorney really earns their fee. Your job is to support your lawyer as needed.

To be timely this answer was written as it came to mind, so expect me to edit it over time as things come to mind or as comments and suggestions are provided.

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