Identifying the invention

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invention-bulbBy David French 

In preparing materials for a recent presentation I boldly summarized the patenting process as follows:

It’s very easy to obtain a patent. Just file an application … for a useful idea that includes a description on how to make it happen, and which specifies a feature that is new (done in one or more “claims”).

Easily said, but challenging to fully understand the consequences of these requirements.

The patent novelty requirement

Discussing these issues with aspiring inventors, I’ve come to realize that one of the sticking points in going forward is appreciating the feature that is being patented. This is the feature referenced above that must be “new.”

Inventors often do not fully appreciate the novelty requirement of patent law. Patents are not issued simply because an inventor has conceived of something which is useful. Patents only issue for things which are new. The Golden Rule of patent law is that a patent cannot take away from the public anything that was previously available. “Previously available” includes “obvious variants” on what was already known, disclosed, or put into use anywhere in the world, in any way, at any time prior to the filing of a patent application.

Too often inventors discover, when they receive back the report from a pre-filing patent novelty search, that other people have thought of the same idea. This happens with good ideas; many people think of good ideas. The painful truth about patenting is that you can only obtain exclusive rights over something that incorporates a feature that is new. This rule ensures that your patent coverage will not be able to interfere with anything that was “previously available to the public.”

Defining your patent coverage

This has all been an essential background to the challenge of understanding what it is in your ideas that can be patented. Another important principle of patenting is that you must define your exclusive rights in terms of a useful apparatus, process or composition of matter. Patents must be focused on a new “arrangement.” This must be done in the documentation filed as part of a patent application. That documentation must include not only a description that will enable others to obtain the benefit of the invention, but also concluding statements that will define the monopoly associated with the patent. The inventor/applicant drafts those statements; this is not the job of the Patent Office.

A patent monopoly is defined in one or more “claims” that conclude the disclosure portion of a patent specification. Inventors often think of patent claims as a mysterious, spooky part of a patent application that is the exclusive preserve of your patent attorney. While it’s true that patent claims are of utmost importance, they are not that hard to understand. It is critical for inventors to appreciate patent claims in order for them to understand the scope and value of the potential patent rights that they might receive.

Patent claims

Every patent concludes with one or more sentences that begin with the words “I claim …” This preamble is followed by a list of features that constitute the arrangement for which exclusive rights will be granted. In one sense, a patent claim is a statement which characterizes the invention. But it’s important to appreciate that a patent claim must always be directed to something tangible: an apparatus, process or composition of matter. A patent claim is not a list of benefits. Nor should it be a statement of a principle or theory on which the invention operates. Patent claims define the things that are to be monopolized.

A claim is infringed if it describes the arrangement being produced or marketed by a competitor. Effectively, the claim is a check-off list for infringement. The competitor must be doing everything listed in the claim, or they will escape liability. Accordingly, it’s a good idea for claims to be short and general in their language.

But a claim must never describe anything that was previously available to the public. If it does the claim will be invalid. One way to avoid invalidity for having described something that existed before is to add details to a claim. But when you add details, a competitor might omit one of the details that you have added and thereby avoid infringing. This is the dilemma/challenge of patent law: drafting claims that are both valid and likely to be infringed.

Having a key, novel feature

To ensure that you have a valid patent claim, it is sufficient to include in the features listed in the claim at least one feature which makes the claim, overall, qualify as being “new.” This feature ensures that the claim is limited to covering only things that are new. Accordingly, when you set out to evaluate whether your invention may qualify for patenting, it’s essential that you identify a feature in the arrangement that you are patenting which makes the overall combination new.

Getting started on claim drafting

Ron Slusky, a retired patent attorney in New York who lectures on the subject, has a formula for helping patent attorneys get focused on drafting the first, key, patent claim. He proposes that you start by completing the following sentence:

The problem of  X is solved by Y.

This is a very helpful formula for getting started. It makes you think in terms of the problem that you have solved. Being able to describe an invention and construct a patent claim in such terms will be helpful in convincing a patent examiner that the claim qualifies as being an “invention.” This is the same as demonstrating that the claim is “unobvious,” a requirement in patent law. You are patenting an invention because you are claiming the solution to a problem.

Not all inventors see their invention as solving a problem. The above test would work equally well if it read: The challenge of achieving X is addressed by Y.  But with a little thought this will be seen to be equivalent to characterizing the invention in terms of providing a solution to a problem.

The critical issue is that the solution to the problem identified in the above formula must include a feature which is new. Otherwise a patent claim based on the solution will not qualify as meeting the novelty requirements of patent law. So long as a single novel feature is present in a patent claim, then the entire claim, collectively, will meet the novelty requirement.

Do not forget that the overall statement of the patent claim must identify an apparatus, process or composition of matter. You are not claiming a theory of operation. You can provide a recipe for making and baking cookies, but you do not have to describe what happens in the oven.

If your solution to the problem describes something that has been done before, then you cannot draft a valid patent claim based on the problem and solution as you have first characterized the invention. Your invention on this first pass is simply not patentable. You must then search for a different problem, or a different way to characterize the problem, along with a modified solution so that the solution you are providing includes a novel feature. This will then become the new invention that you can patent. That is the basis for patent claim drafting.

Conclusion

It’s very easy to obtain a patent. Just file an application. In fact, it may not be easy, but it’s not impossible. Furthermore, the delicate exercise of identifying what is to be patented can be initiated by inventors on their own. It’s essential to eventually engage a patent attorney in order to pursue the process properly. But it is extremely valuable for an inventor to understand that process from the very beginning.

Understanding the patenting process will not only help an inventor appreciate whether the patent rights that he/she might be obtaining are worthwhile, it will also help guide the inventor to better understand and improve the invention. Both results are essential steps to winning through the process of patenting.

David French is the principal and CEO of Second Counsel Services, which provides guidance for companies that wish to improve their management of Intellectual Property. For more information visit www.SecondCounsel.com.

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