Introduction

• Author: Ronald D. Slusky
• Pages: xxi-xxviii

xxi

INTRODUCTION

Almost every patent matter—whether involving procuring a patent,

licensing the patent, or enforcing it in court—brings up the same funda-

mental question:

What Is the Invention?

The question is simple, but deceptively so, because the answer is some-

times maddeningly elusive. Yet the skill with which the answer is

pursued is crucial to maximizing a patent’s economic value. A skill-

fully discerned answer to What Is the Invention? results in patent claims

that secure protection far beyond the inventor’s specific prototype, or

“embodiment,” to ideally encompass all alternative designs that incorpo-

rate the essence of what was invented. By the same token, an incomplete

or wrong answer may create loopholes in the patent that allow competi-

tors to incorporate the essence of the inventor’s teachings in their own

products without infringing the patent.

The difficulty in answering What Is the Invention? arises in part

because from the patent perspective an invention is not a physical thing

but a concept. Even the inventor may not appreciate what that concept

is. Scientists and engineers are typically focused on getting some prod-

uct designed and built, or a material formulated and tested, and getting

the thing to market. Abstract notions like “inventive concept” are largely

irrelevant to someone charged with working out the bugs, finishing the

project on time, and meeting a budget. The task of identifying the inven-

tive concept—answering What Is the Invention?—falls mostly to the pat-

ent attorney.

This book shows how to capture the inventive concept in the form of

a problem-solution statement. This is a sentence of the form:

The problem(s) of _________ is(are) solved by _________.

Here, for example, is a problem-solution statement defining the semi-

nal invention patented by rocket pioneer Robert Goddard.1 The inventive

1. United States Patent No. 1,103,503 (issued Jul. 14, 1914).