The Pre-Filing Red-Team Checklist

Checklist

The Pre-Filing Red-Team Checklist

Six questions to answer before you spend money on an application. Tick what applies, add anything the options miss, and you will know where an examiner is going to push.

Roughly six in seven applications open with a rejection. Most of those rejections are predictable, and the predictable ones are the expensive ones.

About 15 minutes with the people who know the invention. Nothing leaves your side unless you send it.

Have we searched the way an examiner will?

Issued US patents Published US applications, including pre-grant publications Foreign families — EPO, WIPO, CNIPA Non-patent literature — papers, standards, product manuals Classifications outside our own art unit No search beyond competitor products yet

Examiners search patents, published applications and technical literature, and they pull from adjacent fields. A strong answer names the classifications covered and at least one reference you did not expect to find.

Databases, classifications, and anything unexpected you found

Is the claim tied to a technical mechanism, or does it read as a result?

It recites a specific technical mechanism, step by step It names a result or objective the system achieves It could arguably be performed mentally or on paper It applies an established model to a new data domain It improves how the underlying model or system operates Not sure which of these it is

A claim directed to an abstract idea, without enough beyond it, is exposed under Section 101. A strong answer points at the step that does the work and why the result would not follow without it.

The step the claim turns on

Does any single reference already disclose everything the claim recites?

We have identified the closest single reference We can name the element it does not disclose Several references each cover most of the claim We found nothing that comes close Not examined on a single-reference basis yet

One earlier document containing every element ends the argument under Section 102. A strong answer names the closest single reference and the element it does not disclose.

Closest reference, and the element it lacks

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

We have identified the likely primary reference We have identified the secondary references an examiner would add We have written out the combination argument ourselves We have a drafted response to that combination We have evidence of unexpected results or teaching away Not started

The most common rejection under Section 103, and the hardest to argue past, because obviousness is a judgment the examiner makes first. A strong answer has already drafted that combination and the response to it.

The combination you expect, and your response

Does every term have clear boundaries, and does the specification support every limitation?

Every claim term appears in the specification Worked examples support each limitation Functional language — “configured to”, “means for” Relative terms without defined bounds — “substantially”, “efficient” Claims were broadened after the specification was written Not reviewed on this basis yet

Terms without clear edges, or claims reaching past what the application describes, draw an avoidable Section 112 rejection. A strong answer traces every term to a definition or worked example.

Terms at risk, and where the specification supports them

What is the broadest position we believe survives, and what is the fallback?

We have a ranked set of claim positions Positions are scored on likelihood of surviving examination Positions are scored on commercial ground covered We have a defined fallback position The fallback is still worth owning on its own One position only, no fallback

Broad claims are worth more and are likeliest to be rejected; narrow claims get allowed and can be worthless. A strong answer has a ranked lead position and a fallback still worth owning.

Lead position, fallback, and what each is worth

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Sharing your answers

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

Rejections that come with a road map are the cheap ones

Of applications allowed on the first action, 98 percent became patents. Of those rejected but told which claims were allowable, 93 percent did. Of those rejected with nothing identified as allowable, 68 percent. The 25-point gap between the last two is the case for walking in with claims that give the examiner something clearly allowable, while still covering ground worth owning.

Kenorai is not a law firm and does not provide legal advice. Preparing and prosecuting an application on a company's behalf is the work of a registered patent practitioner. This checklist is a technical and strategic exercise intended to improve what your attorney or agent receives, not to replace them.