Working with the Inventor

• Author: Slusky, Ronald D.
• Pages: 235-248

CHAPTER TWENTY

Working with the Inventor

The inventor is the patent attorney’s single most valuable invention

analysis resource. This chapter presents a methodology called “self-

directed learning” that helps us make the best possible use of that

resource in learning about the invention and formulating the problem-

solution statement.

The inventor’s participation in the process of preparing the patent

application itself can also be invaluable. A four-stage collaborative

process for working with the inventor to prepare the application is

presented.

The Limitations of Classroom-Style Learning

Unless guided by some other modus operandi, a patent attorney and his

inventor will typically gravitate to the classroom-style model of informa-

tion delivery we all grew up with. The inventor (teacher) determines

what information will be presented, in what order, and at what level of

detail. Yellow pad and pen at the ready, the attorney (student) dutifully

takes down the information the inventor has determined he needs to

know, in the order the inventor has decided to present it, and at the level

of detail the inventor thinks will be useful.

This may all seem appropriate. The inventor has come up with some-

thing new, and the attorney needs to learn about it. How better to do that

than to enlist the inventor as technology teacher? The attorney is an

empty vessel waiting to be filled and the lecture begins.

The classroom model is not, however, the best learning paradigm for

patent work. The attorney has specific tasks to accomplish, the most cen-

tral of these early on being to identify the problem the inventor set out to

solve and how she solved it. The attorney must also gather details about

the embodiments. But this is a task for later, and even then only at a level

sufficient to satisfy the requirements of “enablement” and “best mode.”1

Unless the inventor has worked on prior patent applications or comes

to the problem-solution paradigm intuitively, she has none of this in

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