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Proof Reading Your Lawyer/Agent's Work

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California. Thanks for all the advice from you guys in the past; I am past the provisional stage of quest for an air tight patent. I met with and hired a law firm that I feel decent about and have started the Non-Provisional drafting of my application. Now to the question. Even though I feel my lawyer is competent in getting the job done, I believe oneself (to some extent) is the best person to really scrutinize, every aspect of the application. The inventor (oneself) want more than anyone, for their patent to be solid/air tight. That no one can design around or steal their 'little baby' they worked so hard to be a success. Other than the obvious, specs being correct, drawings as close to your vision as possible, etc.; what other key (legal or other) issues should I look for or make sure that are covered when reading the final draft of my lawyer's non-provisional application. What are signs to look for to show the quality or lack of, in the application. Also, do you recommend maybe having someone else read it to give their oppinion on the quality of the application? I know this can be a time consumming question, so thanks in advance.
 


divgradcurl

Senior Member
listenup77 said:
California. Thanks for all the advice from you guys in the past; I am past the provisional stage of quest for an air tight patent. I met with and hired a law firm that I feel decent about and have started the Non-Provisional drafting of my application. Now to the question. Even though I feel my lawyer is competent in getting the job done, I believe oneself (to some extent) is the best person to really scrutinize, every aspect of the application. The inventor (oneself) want more than anyone, for their patent to be solid/air tight. That no one can design around or steal their 'little baby' they worked so hard to be a success. Other than the obvious, specs being correct, drawings as close to your vision as possible, etc.; what other key (legal or other) issues should I look for or make sure that are covered when reading the final draft of my lawyer's non-provisional application. What are signs to look for to show the quality or lack of, in the application. Also, do you recommend maybe having someone else read it to give their oppinion on the quality of the application? I know this can be a time consumming question, so thanks in advance.

Of course you should carefully read the application -- you are, after all, signing under oath that you agree that what is written is what you invented!

There really isn't much to look for in an initial nonprovisional application. As long as the drawings and the specifications adequately disclose your invention, you have disclosed your "preferred embodiment," and the claims are drafted such that you have a mix of braod and narrow claims, and that you have an appropriate number of independent claims, that's about all you can do at this point. The patent office, in a year or so from now, will almost ceretainly reject all or many of the claims, and then you can discuss the legal nuances with your patent counsel as you attempt to either redraft your claims are otherwise argue against ("traverse") the rejections.
 
What did you mean by: "that you have an appropriate number of independent claims". And what would be an appropriate number of claims or how would is that determined.
 

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