- Thompson Patent Law’s process begins with a Kick Off Meeting where attorneys ask tough questions to uncover the real problem an invention solves, since many inventors struggle to clearly articulate it.
- The article cites the Supreme Court’s view that sometimes 95% of the inventive act is simply recognizing the problem, with the eventual solution often turning out to be simple once the problem is properly framed.
- You cannot patent an obvious claim, and being unable to explain the underlying problem to a Patent Examiner makes an obviousness rejection more likely.
- Clearly identifying the unsolved problem up front gives the attorney a stronger basis to rebut an obviousness rejection later by showing the Examiner that no one else had figured out that specific problem.
- Understanding the problem also helps the firm value the invention early and prepare to present the Point of Novelty (PON) persuasively to the Examiner down the road.
At Thompson Patent Law, our general process of working with a new client on their patent claim starts with a “Kick Off Meeting.”
This is an opportunity for our Austin patent attorneys to get to know the inventor, really understand the invention, and ask the owner some tough questions to uncover hidden answers and possibly “flaws” regarding their invention that they may not have previously thought about.
Inventors are often surprised when we ask them to start by telling us very clearly the problem they are solving.
This may seem like a “no brainer,” but as many attempt to explain their position, it becomes clear that they’ve found a solution to a “problem” that they can’t properly point to or articulate.
I tackle this issue of problem-solving right from the start for good reason. 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, often 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.
This is important because 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.
Speaking to the Patent Examiner
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.
However, by showing the examiner… “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 PON 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.
If you’ve never really thought about the problem your invention solves, or worked through such ideas with a qualified Austin patent attorney so that you are not hindered or “trapped” by them down the road, there’s no better time than the present to start.
