Seven Questions Every Inventor Should Answer Before Filing a Patent Application

Filing a patent application is one of the most important steps an inventor can take. It protects your priority rights, signals credibility to investors, and can form the foundation of a business. But it’s also one of the easiest steps to get wrong.

During my 15 years as a patent examiner at the U.S. Patent and Trademark Office (USPTO), I reviewed thousands of applications. Time and again, I saw filings that were doomed before they even reached my desk. Not because the idea lacked merit, but because inventors rushed ahead without preparing properly.

This article is not about drafting tricks or advanced claim strategy. Instead, it’s about the pre-filing preparation that separates strong, defensible applications from costly missteps. If you’re considering filing for a patent, here are seven questions every inventor should answer before hitting “submit.”

1. Have I confirmed my invention is truly novel?

A patent is only granted for something new. Too many inventors skip a proper prior art search, relying instead on a quick Google query or their belief that “I’ve never seen this before.” But novelty in patent law isn’t about what’s on store shelves. It’s about whether the invention already exists in any patent, publication, or public use anywhere in the world.

As an examiner, I often found nearly identical inventions buried in obscure foreign patents or academic journals. Discovering this early can save you months of time and thousands of dollars.

Pro Tip: Do at least a high-level search using databases like Google Patents, the USPTO, or the World Intellectual Property Organization (WIPO). Better yet, consult a professional searcher or patent attorney. It’s better to adjust course early than to invest in an application      that may have a high likelihood of rejection.

2, Have I described my invention in enough detail that someone else could make and use it?

One of the top reasons applications are rejected is lack of enablement under 35 U.S.C. §112. If your disclosure is vague (e.g. a device that improves efficiency) it won’t hold up. The law requires that you describe your invention so that someone skilled in the field could reproduce it without undue experimentation.

In practice, this means going beyond big-picture ideas. What materials? What dimensions? How does it operate in different scenarios?

 Pro Tip: Pretend you’re writing instructions for a stranger with no prior knowledge. Include diagrams, step-by-step explanations, and variations. The more detail you provide, the stronger your application becomes.

3. Do I understand the problem my invention solves (and can I state it clearly)?

Examiners often ask: What problem does this invention address? If you can’t answer that in a clear sentence, your application risks drifting into overgeneralizations that weaken your claims.

During examination, we look for a clear link between problem and solution. If your application fails to articulate that, it becomes harder to show novelty and non-obviousness.

 Pro Tip: Frame your invention with a simple problem/solution statement. For example:

Problem: Coffee mugs spill easily when carried in bags.

Solution: My spill-proof travel mug uses a pressure-activated valve that only opens when sipping, preventing leaks during transport.

This anchors your application and makes it easier for both examiners and investors to understand the invention’s value.

4. Who actually owns this invention?

Ownership mistakes are surprisingly common and can derail enforcement or investment later. Was the invention created during your employment? Were there collaborators? Has everyone signed an assignment agreement?

From an examiner’s perspective, inventorship must be correct from the start. Adding or removing inventors later can raise complications. From a business perspective, investors want clean ownership records; not disputes about who owns the rights.

Pro Tip: Clarify inventorship early and execute assignments promptly. It’s a small step that prevents major problems down the road.

5. Do I have the right supporting materials (drawings, data, prototypes)?

While prototypes aren’t required, supporting materials can make a big difference. Professional drawings are often necessary, and experimental data can bolster your claims.

As an examiner, I often found that a clear figure did more to illuminate an invention than paragraphs of description. When drawings are missing or unclear, rejections (or delays) become more likely.

 Pro Tip: Invest in quality patent drawings. They’re not just formalities — they’re communication tools that show your invention clearly and persuasively.

6. What’s my filing path: provisional, non-provisional, design, or international?

Not all applications are the same. A provisional application buys you 12 months of “patent pending” status but won’t itself be examined. A non-provisional starts the actual examination process. If you want global protection, a Patent Cooperation Treaty (PCT) application may be the right path. And don’t forget design patent applications. They protect the ornamental appearance of your invention rather than its function. For many products, especially consumer goods, a design application can provide quick, cost-effective protection that complements a utility filing.

Another common mistake I’ve seen is assuming one application is enough. In reality, inventors often need to file more than one type of application to cover different aspects of the same invention. For example, a startup might file a utility application on the underlying technology, a design application on the product’s appearance, and even multiple provisionals as the invention evolves.

Consider Apple: its iPhone portfolio includes not only utility patents for the underlying technology but also design patents on the sleek look of the phone itself. These design patents became powerful tools in high-profile litigation. Dyson did something similar with its vacuums, protecting both the functional innovations (like cyclonic separation) and the distinctive aesthetic designs. In both cases, a mix of application types created a moat that was stronger than any single filing.

Pro Tip: Choose your filing strategy carefully. A provisional can be powerful if it’s drafted thoroughly, but a poorly written one is almost as bad as no filing at all. And remember: filing a combination of utility and design applications may be the best way to build a truly defensible portfolio.

7. Am I financially prepared for the long game?

Patents aren’t one-time expenses. Beyond filing fees, you’ll face office actions, possible appeals, and maintenance fees. Many inventors underestimate the true costs, leading to abandoned applications and wasted opportunities.

As an examiner, I saw promising applications dropped not because they lacked merit, but because inventors weren’t financially prepared to see them through.

 Pro Tip: Budget for more than the initial filing. Think in terms of the entire patent lifecycle: from first filing to potential enforcement or licensing.

The Bottom Line

Before filing, every inventor should pause and ask these seven questions. Doing so doesn’t just improve your odds of getting a patent granted, but it also strengthens your ability to enforce, license, or attract investors down the road.

The truth is that examiners can often tell within minutes whether an inventor did their homework before filing. When you prepare thoroughly, you don’t just make an examiner’s job easier; you make your own journey smoother, faster, and far more valuable.