Introduction

• Author: Ronald D. Slusky
• Pages: 3-3

Introduction to Part I:

Identifying the Invention

PART I—Identifying the Invention—takes as its central premise that an

invention is not a thing, but a concept. We have to know what the inven-

tive concept is to be able to reliably draft claims capturing the invention

at its full breadth.

CHAPTER ONE introduces the notion of inventive concept, taking as

its example the ballpoint pen, patented in 1888. Also introduced is the

idea that the most effective route to the inventive concept is a process

that moves forward from the problem the invention solves to iden-

tify the inventive solution, not backward from the inventor’s specific

embodiment(s).

CHAPTER TWO expands upon this concept. It uses the paper clip to

illustrate how things can go quite wrong if the analysis of an invention is

embodiment-based rather than problem-solution-based.

CHAPTER THREE focuses on the centerpiece of problem-solution inven-

tion analysis—the problem-solution statement. A problem-solution state-

ment is a definition of the invention setting forth the problem the inven-

tor sought to solve and the inventor’s solution to that problem in terms

that are as broad as the prior art will allow. The problem-solution state-

ment provides a foundation for the patent application’s broadest claims,

as presented in Part II of the book.

CHAPTER FOUR offers ways of analyzing the invention to ensure that

the problem-solution statement is not unduly narrow, while CHAPTER

FIVE presents the opposite side of the coin. It discusses how we can

determine when a problem-solution statement is too broad and how it

can be narrowed without being made too narrow. The techniques dis-

cussed in these two chapters can also be used when drafting claims.

CHAPTER SIX introduces the concept of the Planned Retreat. The meta-

phor of the Planned Retreat is a strategy for identifying and prioritiz-

ing the invention’s fallback features. These are aspects of the inventor’s

embodiment(s) that can serve as a basis for patentability if what we

thought was the broad invention turns out to be in the prior art.

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