What Patent Lawyers Review Before Filing and Why It Changes Everything

Patent lawyers guide each application through a preparation phase that shapes its direction before drafting begins. Within this process, patent lawyers perform structured reviews that define scope, strength, and positioning. The inventor’s description is examined to understand function, purpose, and distinguishing features. This approach supports a clear and well-aligned foundation for the application.

Each review provides insight into where claim boundaries can be placed and how the invention is understood. Assumptions related to novelty are assessed with care to support accuracy and clarity. The quality of the disclosure influences how broadly protection can be written. At Parsons and Goltry, technical experience across engineering, software, and medical devices supports direct and informed evaluation from the first conversation.

The Prior Art Search

Before any drafting begins, patent lawyers conduct a thorough search of existing patents, published applications, and public disclosures. The goal is to identify prior art, which is anything already on record that could affect the novelty or non-obviousness of the invention. This covers the USPTO database as well as broader published literature.

Prior art findings reshape the entire application strategy. When a closely related patent already exists, the attorney determines whether the invention remains patentable and how the claims need to be framed to distinguish clearly from what came before.

Filing without a proper prior art search often produces overly broad claims that the USPTO will reject. It can also result in claims written so narrowly that they fail to protect what matters most. Understanding what already exists allows the attorney to position the invention’s differences as specifically and defensibly as possible.

At Parsons and Goltry, prior art searches are completed before a single word of the application is drafted. It is a standard part of every pre-filing process.

The Patentability Assessment

After identifying prior art, patent lawyers evaluate the invention against two central legal standards. The first is novelty: has this been done before? The second is non-obviousness: would someone skilled in the field consider this a predictable next step? This assessment is a strategic analysis of where the invention’s strongest protectable ground lies.

The patentability assessment determines which type of application is the right starting point. A utility patent protects how something functions. A design patent protects how something looks. A provisional application establishes an early filing date while development continues. Filing the wrong type, or filing before this assessment is complete, can result in wasted time, fees, and a narrower scope of protection.

At Parsons and Goltry, each patentability assessment is conducted specifically for the invention at hand. No templates are used at any stage.

The Claim Strategy Session

Before drafting begins, patent lawyers review how the claims should be structured. This includes deciding which aspects of the invention to pursue as independent claims, which offer the broadest protections, and which to build out as dependent claims, which serve as narrower fallback positions.

Claim structure is the architecture of the patent. A poorly constructed claim set leaves significant aspects of the invention unprotected, creates openings for examiners to reject the application, and gives competitors gaps they can legally exploit. Reviewing the claim strategy before writing ensures the application is built on the strongest possible foundation from the start.

This is also the stage where the prosecution strategy gets embedded into the application itself. Anticipating likely examiner objections before filing is far more effective.

At Parsons and Goltry, every application is drafted by the partners directly. The claim strategy is reviewed before the first word of the application is written.

What the Pre-Filing Review Determines

The pre-filing review is the patent application in its most consequential form. By the time drafting begins, the scope has been defined, the application type has been selected, the prior art has been mapped, and the claim architecture has been planned.

Inventors who abbreviate this phase file into uncertainty, with an application shaped more by assumption.

Parsons and Goltry offer a free initial consultation where this exact review process begins. It is handled by the partners, with no junior staff involved, from the very first conversation.

Schedule your free consultation at patentsavers.com.

Frequently Asked Questions

What does a patent lawyer do before filing a patent application? 

Before filing, a patent lawyer reviews the inventor’s disclosure, conducts a prior art search, assesses patentability, and develops a claim strategy. This pre-filing review determines the scope, type, and strength of the application before drafting begins. Skipping this phase is one of the most common reasons patents receive weaker protection.

How long does the pre-filing review process take? 

The timeline varies depending on the complexity of the invention and the depth of prior art found, and the pre-filing review typically takes several weeks. Rushing this phase often results in claims that are too broad to survive examination or too narrow to provide meaningful protection. Time invested upfront reduces the likelihood of costly office actions later.

What is a prior art search, and why does it matter? 

A prior art search identifies existing patents, published applications, and public disclosures related to your invention. Patent lawyers use this search to determine whether the invention is novel and non-obvious, two legal requirements for patentability. The findings shape how claims are written and whether the application strategy needs adjustment before filing.

What is a patentability assessment? 

A patentability assessment is a legal analysis that evaluates an invention against the standards of novelty and non-obviousness. It determines whether a patent is likely to be granted and which type, whether utility, design, or provisional, is the appropriate starting point. This assessment interprets prior art findings and translates them into a filing strategy.

What is the difference between a utility patent and a design patent? 

A utility patent protects the functional aspects of an invention, covering how it works or how it is used. A design patent protects the ornamental or visual appearance of a product. The choice between them is determined during the patentability assessment and depends on what aspect of the invention carries the most commercially valuable protection.

What is a provisional patent application? 

A provisional patent application establishes an early filing date without requiring fully developed claims. It gives inventors 12 months to continue refining the invention before filing a complete utility application. Patent lawyers recommend filing a provisional when an invention is still in development and the inventor needs to secure a priority date quickly.

Can an inventor file a patent application without a lawyer? 

Inventors can file without legal representation, though doing so increases the risk of claims being written too narrowly, prior art being missed, and office actions being mishandled. Patent lawyers bring legal strategy, technical analysis, and prosecution experience that affect the strength and scope of what gets granted. Patents filed without professional review frequently require costly corrections or fail to protect the invention’s full commercial value.

What is a claim strategy in patent law? 

Claim strategy refers to how a patent attorney structures the independent and dependent claims in an application to maximize the scope of protection. Independent claims define the broadest version of the invention, while dependent claims add narrower fallback positions. A well-constructed claim set makes the application harder to reject and harder for competitors to design around.

How does an inventor know if an invention is patentable? 

An invention must be novel and non-obvious to someone skilled in the relevant field. A patent attorney determines patentability through a prior art search followed by a formal assessment. Most reputable patent law firms will give inventors a candid evaluation of patentability before any application work begins.

What should an inventor bring to a first consultation with a patent lawyer?

Bring as detailed a description of the invention as possible, covering how it works, what problem it solves, and what makes it different from existing solutions. Sketches, diagrams, prototypes, or working models are all useful. The more specific and complete the initial disclosure, the more productive the first consultation will be.