Improving Patentability Before Filing

The most important part of getting patent claims allowed takes place before the claims are drafted. No matter how good a patent attorney is and how well the application is drafted, once filing takes place, the options for overcoming rejections are limited by what is presented in the application. While nothing can assure that a filed application will issue with meaningful claims, an Applicant’s chances can be greatly improved through a process of invention development that is sometimes referred to as “invention sculpting.”  

This is an iterative process. A preliminary inventive concept is developed, its important features are identified, and simplified prior art searches and patentability evaluations are performed. If those evaluations suggest that obtaining patent protection may be difficult, the concept is modified and then reevaluated. The cycle is then repeated until the invention appears better positioned for patent protection. In its simplest form, the sequence is: Search → Evaluate → Modify → Repeat. The goal is to develop claims that are both patentable and, importantly, that also preserve those features of an invention that distinguish it from the inventions of competitors and that make it attractive in the marketplace.

Historically, this kind of invention development was recognized but not widely used because it was too slow and labor-intensive to be practical in many settings. A relatively simple patentability analysis and invention modification could sometimes take many weeks and many applicants often chose to file first and address patentability problems during prosecution. Unfortunately, without having determined what problems their invention was likely to encounter and not having taken steps to avoid those problems, these applicants often found themselves with an unpatentable invention and with a public disclosure making redemptive innovation impossible.  

Over the last few years, things have changed. Recently developed AI tools have made iterative invention development much more practical. Properly used, AI can help expand an inventor’s initial concept, suggest alternatives, generate broader and more effective search language, and help compare developing features with the prior art. In that sense, AI can accelerate the process and make it easier to explore whether a concept can be improved from both a technical and patent perspective.

That said, AI is not the inventor and it is not a patent attorney. It is a tool that can provide almost instantaneous information on what has been done and suggestions on how to modify an invention to avoid identified obstacles to patentability. It should never be relied upon to make final judgments about patentability, claim drafting, or the ultimate content of a patent application.

The practical value of invention sculpting is that it encourages patent awareness early enough to influence technical choices. In some cases, a relatively simple search may reveal that a core concept of an invention is already too close to what is known. In others, the search may reveal that the strongest path lies not in the first formulation of the invention, but in a modified version that better preserves commercially important features while improving the prospects for protection.

Seen in this way, invention development is not just the process of arriving at something that works. It is also a process for arriving at something that is better positioned for meaningful and enforceable patent protection.

Disclaimer: This piece is provided for general informational purposes only and does not constitute legal advice. Patent issues are often complex and highly fact-specific, and no one should act on general information of this kind without consulting qualified patent counsel regarding the particular circumstances involved.