Call Before You Dig – Reducing the Cost of Patenting By Preparing Beforehand

by Downs Rachlin Martin PLLC

So you’ve got an idea and, although you briefly thought about buying the “Do-it-Yourself” patent kit you saw offered on TV after the late show with David Letterman, you’ve decided to call a patent attorney/agent for help with the patent application.  What should you do before you make the call?

Generate a thorough written description of the invention and illustrative diagrams

A patent application consists of a description, drawings, and patent claims. (An excellent primer on patents can be found here: Patent Basics, By Paul Smith.)  Both the description and the drawings should be completed by you prior to beginning discussions with a patent attorney.  The written description should include all significant aspects of the invention and include alternative formulations, part or process step substitutions, and optional components.  An explanation of your knowledge of the prior art in the field of invention, while not necessary for the patent itself,  will be helpful.

For example, consider U.S. Patent No. 4,320,756 (principle drawing right):Patent, Breathing Aparatus

Without commenting on whether breathing through a piece of hose stuffed through toilet water is a good idea, this patent describes a device the inventor believes can be used to save your life during a fire in a high rise building by allowing you to breathe “fresh” air while the rest of the building melts around you.  I’m sure your invention is more clever than this, but for this post let’s just suppose this is your invention.

The drawings do not need to be as detailed as what is shown above, but it should show all of the important aspects of your invention.  In this case it may be the hose, the mouthpiece, and hopefully a one-way valve so that you don’t breath in toilet water.  You should provide a written description of your invention – what each piece of the invention is and what it is made of (including alternatives).  For example, is the tube flexible or rigid or doesn’t it matter? Is a specific valve necessary? Does the insertion of the tube happen in a certain way?  If the invention is a new process of breathing through a toilet, you should provide a flowchart detailing the process steps necessary to complete the task, e.g., step 1: blow out while placing tube in toilet, step 2: watch for water entering tube, step 3: only breathe in when tube is substantially devoid of water (probably a critical step!), step 4: if this contraption does not work, try opening the window.

Spend Your Time Or Your Money?

Developing the description and drawings yourself can significantly reduce costs of patenting because it limits the amount of original drafting to be done by the patent attorney, accelerates the understanding of the inventive concept, and facilitates the drafting of the claims.

A good starting point for inventors who are unfamiliar with patents is to identify an existing patent in your inventive field and use it as a guide for the types of information you will need to include with the description and drawings of your invention. There are many websites to use to search for patents, I personally like FreePatentsOnline – it’s easy to use, provides pdfs, and has an advance search feature that mimics the USPTO website.

If you are trying to reduce costs, but don’t want to waste your time on things the attorney does not need, there is a large grey line that indicates when an idea is “complete enough” to get a patent attorney involved.  As a rule of thumb, you are ready to draft the patent pieces if you can describe your invention to an equal in your field so that they are able to understand the invention and its implementation.  At that point, you can put together the drawings and description of your invention, and then call your patent attorney.

More patent advice for new inventors to come…

Posted in General IP, Patents

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Downs Rachlin Martin PLLC | Attorney Advertising

Written by:

Downs Rachlin Martin PLLC

Downs Rachlin Martin PLLC on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Privacy Policy (Updated: October 8, 2015):

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

Information Collection and Use by JD Supra

JD Supra collects users' names, companies, titles, e-mail address and industry. JD Supra also tracks the pages that users visit, logs IP addresses and aggregates non-personally identifiable user data and browser type. This data is gathered using cookies and other technologies.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.


JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at:

- hide
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.