Material adapted from Patent Offense: 7 Steps to a Safe, Secure Patent Portfolio by: Craige Thompson.
What Problem Does Your Invention Solve?
One key feature of our Kickoff Meeting is the structure of our interviews. We need to uncover many important facts and ideas during this Kickoff Meeting, and one is the underlying problem that the invention is meant to solve. I always like to start the meeting with a question, and the scenario goes something like this:
“Let’s do this in a chronological fashion. Put on the Way Back Machine and go back in time in your mind to the point just before you came up with this invention. What were you working on at that point in time? What problems were you facing that were unsolved that this invention had to solve?”
These questions trigger a lot of insight, making it easy for the engineer to comfortably tell the story: “Yes, this was the problem. This wall was stopping us—we could not jump over this wall. We figured out how to build a door through the wall, and this invention is our answer to getting to the other side of the wall.”
This one question has revolutionized our Kickoff Meetings. By inspiring the right thinking, we are able to get the raw, unvarnished answers from the engineers before they have a chance to filter their response.
I ask the engineers to describe to me that wall. Describe that hurdle. Describe the solution and help me understand both the problem and the solution.
Recognize the Problem to be Solved
Asking inventors what problem they were solving is one of the initial steps in the Kick-Off Meeting for good reason. The Supreme Court has said recently, and it has been repeated by many other courts, that often what looks like an obvious invention may not be obvious.
I generally do not explain all this to the inventors, but the reason that getting a clear grasp on the problem to be solved is so powerful becomes evident long after we file the patent application. It could manifest a couple of years later, when we find ourselves on the phone talking with the Patent Examiner who is on the fence with an obvious rejection. At that point we are able to say to them, “Well, the problem the inventors first identified and then solved is…” It is tremendously valuable for us to be able to have that conversation in order to sell the invention to the Patent Examiner
Let me state this another way. The Supreme Court has said that sometimes 95% of the act of an invention is just recognizing the problem. Once you recognize the problem for what it is, sometimes the solution is really simple. It may look like a simple solution to something, but the real inventive act worthy of a patent was in recognition of the problem.
And so, if you just tell the examiner in the Patent Office, “Here is the solution,” but you are unable to explain the problem that was solved, the Examiner is still likely to consider the invention to be obvious.
You cannot get a patent on an obvious claim. In order to rebut that rejection and overcome that rejection of obviousness, it is extremely helpful to know what the problem is that everybody was stuck at.
By showing the examiner that here is a problem that nobody figured out an answer to, and then we came up with this insight—here is a simple solution and we were the first ones to figure it out—we get the patent. Getting this initial, key information from the inventors at the front end of the process not only helps us value the invention, it also helps us assess whether we have a strong rebuttal to an obviousness rejection.
Grasping the problem that the invention solves is the very first thing we try to find out, so that we can sell the Point of Novelty to the Examiner later on down the road. I know that seems simple, but how many patent drafters are thinking this far ahead? Everyone should.