Inventions Are Concepts

• Author: Ronald D. Slusky
• Pages: 5-10

CHAPTER ONE

Inventions Are Concepts

For most people, an invention is something tangible. One thinks of

mechanical devices like the zipper or manufactured substances like tetra-

cycline. Even a process invention like pasteurization evokes the physical

reality of the milk being heated.

For patent lawyers, however, an invention is not something physi-

cal, but a concept. Indeed, in his 1933 book Double Patenting, patent law

author Emerson Stringham goes so far as to state that an invention is an

abstraction:

The difficulty which American courts . . . have had . . . goes back

to the primitive thought that an “invention” upon which the patent

gives protection is something tangible. The physical embodiment or

disclosure, which, in itself is something tangible is confused with the

definition or claim to the inventive novelty, and this definition or claim

or monopoly, also sometimes called “invention” in one of that word’s

meanings is not something tangible, but is an abstraction. Definitions

are always abstractions. This primitive confusion of “invention” in the

sense of physical embodiment with “invention” in the sense of defini-

tion of the patentable amount of novelty, survives to the present day,

not only in the courts, but among some of the examiners in the Pat-

ent Office [emphasis added].1

There is no possibility of clear thinking, says Stringham, until it is

understood that an invention as protected by a patent is an abstraction.

Patent practitioners refer to that abstraction as the “inventive

concept.”

The patent attorney’s primary mission is to discover the inventive

concept underlying the inventor’s embodiment, and then to capture the

inventive concept in the patent claims. To fail in that mission is to open

the door for a competitor to take advantage of the inventor’s contribution

to the art while avoiding liability under the patent.

1. Emerson Stringham, Double Patenting (Washington, D.C.: Pacot Publica-

tions, 1933).

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