Some additional thoughts to consider as you draft:
- Time requirements: how fast does this need to be drafted? Is there an upcoming bar date (e.g. one year grace period from the provisional, etc.)?
- Foreign considerations: we will discuss this avenue later on. Nonetheless, is this something that the client intends on pursuing?
- Inventorship: are all of the listed inventors actually “correct” inventors. Make sure that you have not left out anyone.
- Novelty Search: does the client want you to see what is out there before you begin drafting? This may be helpful because you can then distinguish the new invention from what is out there. The downside is that you may come across a prior art source that discloses your invention, and you will have an ethical duty to report this to the USPTO.
- Drawings: Are there enough figures to adequately “show” the invention. Consider one or more views if it is a mechanical invention, or one or more further flowcharts if it is a software based invention.