The Pre-Filing Red-Team Checklist

Checklist

The Pre-Filing Red-Team Checklist

Six questions to answer before you spend on a patent application.

About 14 percent of US applications are allowed on the examiner's first action. The rest open with a rejection, and most rejections fall under four sections of the patent statute. Work through these in order, with your team or your practitioner, and you'll know which ones are coming before the examiner tells you.

Nothing leaves your side unless you send it.

What will an examiner cite against this, and have we searched for it the way they will?

We searched patents and published applications, beyond competitor products. We searched technical literature: papers, standards, and product documentation. We searched the adjacent fields an examiner is likely to pull from.

SEARCH · Targets §102 and §103. A §102 rejection usually means one earlier document already disclosed the claim. The reference could have been found. Nobody found it before filing.

What was searched, and anything unexpected you found

Does each independent claim recite how the system works, or only what it achieves?

Each independent claim names a concrete technical mechanism. Someone outside the team read each claim cold and tried to describe it as an abstract idea.

ATTACK · Targets §101. Claims that describe a result rather than a specific technical mechanism are the usual trigger for eligibility rejections. Software and AI claims are especially exposed.

The mechanism each claim turns on

Which two or three references would an examiner combine, and what is our answer to that combination?

We named the most likely reference combination for each lead claim. We wrote our counterargument down before filing.

ATTACK · Targets §103. Obviousness is the most common rejection and the hardest to argue past, because the examiner makes the judgment call first.

The combination you expect, and your answer to it

Is every claim term clearly bounded, and does the specification support every limitation?

Every claim term has a boundary a stranger could apply. The specification supports each limitation, including the fallback positions we may need.

ATTACK · Targets §112. These rejections tend to come from deadline drafting or late broadening. A specification written to describe the product leaves the claims nowhere to move during prosecution.

Terms at risk, and where the specification supports them

What is the broadest version of this claim we believe survives, and why?

Each candidate scope is scored on two things: odds of surviving examination, and commercial ground covered. We lead with the positions that score well on both.

RANK · Breadth against allowability. Of roughly 382,000 applications that got a first action in 2023, those rejected but told what was allowable went on to issue 93 percent of the time. With nothing allowable identified, 68 percent.

Your lead position, and why you believe it survives

If our lead position is rejected, what's the fallback, and is it still worth owning?

Every lead position has a named fallback. Each fallback still covers ground a competitor would have to design around.

RANK · Plan the next round. Every round costs money and calendar time. A first request for continued examination is $600 in USPTO small-entity fees alone, before any practitioner hours.

The fallback, and what it is worth

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Sharing your answers

Include my answers above. Leave this unticked to get in touch without sending them.

If you can answer all six clearly, you've already removed some of the back and forth. If any answer is fuzzy, that's the work to do first.

About Kenorai

Kenorai is a patent strategy consultancy. Neither Jan Gerards nor Seth Everson is a patent attorney or a registered patent agent. We work with experienced registered practitioners, and alongside whichever practitioner you choose.

Any patent agent we bring in is non-exclusive, and we receive no referral fees or other compensation from any patent agent or firm.

We don't file patents. Kenorai is not a law firm, and this checklist is a planning aid, not legal advice.

Sources

Dennis Crouch, Patently-O, "Rejected, With a Road Map" (Aug. 17, 2026) and "Allowable, Not Allowed: What the First Action Predicts" (Aug. 18, 2026).
Juristat, "The Most Common Rejections: 102, 103, and 112(b)."
USPTO, Fee Schedule, effective January 19, 2025 (last revised August 14, 2026).