The Problem-Solution Statement, Reaching for Breadth

• Author: Ronald D. Slusky
• Pages: 33-50

CHAPTER FOUR

The Problem-Solution Statement—

Reaching for Breadth

The prescriptions Start Early and Think Big presented in the previous

chapter give us a good start in making the problem-solution statement,

and ultimately the claims, as broad as they can be. This chapter presents

a number of other prescriptions and ideas that can be brought to bear

in that quest. These techniques can be applied in the very earliest stages

of our thinking, even before the first draft of the problem-solution state-

ment has been committed to paper. They can also be used later on, when

the problem-solution statement is being tried on for size in the search for

infringement loopholes.

The problem-solution statement will serve as the basis for some of the

patent application’s broadest claims.1 However, the ideas in this chapter

can also be used when drafting claims directly.

Envision the “Opposing Team”

True or false? In characterizing an invention, one should try to capture

the inventor’s contribution to the art.

The answer would certainly seem to be “true,” but it is not the com-

plete answer. The value of a patent is not determined by how cleverly or

well its claims define the product or method that the inventor designed.

A patent is valuable when its claims read on what somebody else will

market or, at least, would market but for the existence of the patent. If

it is expected that competitors will slavishly “knock off” a copy of the

inventor’s marketed product, there is no real issue—almost any claim

will do. But that rarely happens. More often a competitor implementing

the essence of the inventor’s teachings does so in a way that departs sig-

nificantly from the inventor’s design.

Thus when we are drafting the problem-solution statement—which

will serve as the basis for the patent application’s broadest claims—the

appropriate mind-set is not one of defining what our inventor has done.

1. See Chapter Seven.

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34 CHAPTER FOUR

Rather, our mind-set needs to be one of

defining what some competitor may do

that takes advantage of what our inventor

has done—particularly a competitor who

is intent on doing so while avoiding the

claims of our inventor’s patent.

A powerful way of putting ourselves

in that mind-set is to conjure up the

image of a potential infringer and his

patent attorney. The book refers to them

as the “Opposing Team.” These adver-

saries will be poring over the claims after

the patent issues, looking either for limi-

tations that their product does not meet

or for some way to redesign the product

to that end.

At the very same time, then, that we are formulating a problem-

solution statement or a claim, we should imagine ourselves to be the

Opposing Team. As each word, phrase, and structural element appears on

the screen or on our yellow pad, we should try to think of a way around

it, just like the real-life Opposing Team will do. Indeed, the author often

has a sense of the Opposing Team standing over his shoulder as he writes,

watching for something to appear that will make it possible to design

around the issued patent or argue that their product does not infringe.

This constant awareness of the Opposing Team enables us to serve as

our own worst critic or perhaps, one might say, our own best critic. It helps

us become aware of unduly limiting aspects of a problem-solution state-

ment (or a claim) in real time so that problems can be fixed as they arise.

Adopting the Opposing Team’s mind-set can also help us identify

potential arguments that the problem-solution statement is too broad or

ambiguous, rendering any claims that may be based on it unpatentable

(pending claim) or invalid (issued claim).

The inventor should also be made aware of the Opposing Team—if

not by name, at least in concept. When first drafting or later editing the

problem-solution statement or a claim, we can emphasize to the inventor

that the goal is to define the inventive concept in a way that precludes

a motivated competitor from “ripping off” the invention. The inven-

tor can be encouraged to help think about how the invention might be

appropriated by a competitor without coming within the ambit of the

current problem-solution statement. Inventors are often captivated by the

puzzle-like aspect of this challenge and find loopholes that the attorney

might never have considered.

FIGURE 4–1The Opposing

Team scrutinizes every word as

the prosecuting patent attorney

writes it, waiting for him to

create an infringement loophole.