INDUSTRY INSIGHT

All you need to know about protecting your firm’s IP

By Michael Krawzsenek, Partner, Intellectual Property, Norton Rose Fulbright US

When people ask what I do for a living, I respond by saying that I am a patent attorney, and I help people protect their inventions. Oftentimes, a follow-up question that I receive is, “What’s an invention?”

My response to this question has changed over the course of my career.  Initially, my answer was that an invention is an idea. I used to prepare patent applications based on this answer by describing the idea in detail, incorporating supporting data in the application, and crafting language to broadly and narrowly claim the idea. My earlier patent applications had minimal to no discussion of the advantages of the idea over previous publications and ideas (“prior art”).  During prosecution, this oftentimes resulted in multiple office actions, request for continued examinations, and appeals to gain allowance of a given patent application.  In short, prosecution of my earlier patent applications was inefficient.

This inefficiency led me to realize the importance of characterizing the invention as something more than just a new idea. In particular, it led me to characterize inventions as ideas born from existing problems.  That is, inventions are ideas that provide solutions to existing problems.  A classic example of this is the lightbulb.  Efforts to create a lightbulb began in the 1800s, with initial lightbulbs being inefficient due to the filament breaking after a few days of use.  Enter Thomas Edison and his solution to this problem—a longer lasting carbon-based filament, which extended the lifetime of the lightbulb and made the lightbulb more commercially viable over existing light sources.

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I had the honor and opportunity to speak about this problem/solution-based approach of describing inventions in September 2019 at the 5th GPCA IP Awareness Workshop in Muscat, Oman.  My presentation focused on invention disclosures and their importance as vehicles for describing new ideas and how they can help with increasing the quality and efficiency of the patent procurement process.  Invention disclosures that describe the existing problems in a given field (e.g., fragile filaments in lightbulbs) and the solutions offered by the new idea (e.g., longer lasting filaments) provide a more complete description of the invention. This can lead to patent applications that characterize inventions in a problem/solution format, which can result in a more time- and cost-efficient prosecution of these applications to granted patents.

The problem/solution format for patent application drafting is a well-known format.  The European Patent Office views inventions in this format to determine whether an idea is inventive or patentable.  The United States Patent and Trademark Office, however, does not use such a problem/solution format; it uses an “obviousness” analysis.  Based on my experience, drafting patent applications in the problem/solution format has increased my success rate of obtaining granted US patents.  It has also reduced the number of office actions issued in any given US patent application, which reduces the costs of obtaining a US patent.  A reason for this increased efficiency is that patent applications drafted in a problem/solution format help to frame an invention in a way that is meaningfully different from the prior art.  It is a way to persuasively argue in the patent application for the patentability of the invention vis-à-vis the prior art.  The problem/solution format provides an avenue for a patentee to convince the examiner that the invention is patentable prior to the examiner performing a patentability search.

The most efficient way to draft a patent application in a problem/solution format is through a well-prepared invention disclosure.  Inventors are experts in their respective scientific fields.  They have an intimate understanding of what the invention is, how it works, and why it is important.  They also typically have the most knowledge of the relevant prior art.  A standard invention disclosure includes several sections and corresponding questions to help inventors to describe their ideas.  For the problem/solution format, the key sections of the invention disclosure include the Description of the Invention, Statement of the Problem, and Prior Art.

For the Description of the Invention section, one of the goals is to distill the invention down to a handful of sentences.  This allows a patent attorney to understand the broader concepts of the invention, which can be helpful when drafting claims of the patent application. The following is an example of such a description that was discussed during my presentation at the 5th GPCA IP Awareness Workshop:

Preparation and use of pyrochlore-based catalysts for methane reformation is disclosed.  The catalyst can be made without having to use the Pechini method.  In particular, the catalysts can be prepared directly from solution without having to form an intermediate gel phase.  This results in a more economically efficient and commercially scalable production process.

The above description provides insight into the relevant prior art (Pechini method) and how the current invention is different from the prior art (avoiding the formation of an intermediate gel phase).  It persuasively frames the invention as being different from the prior art.  Inventors are in the best position to provide this type of information.

For the Statement of the Problem section, the following example was used during my presentation:

Pyrochlores are typically synthesized by the Pechini method, which requires the blending of positive metal ions in a solution, controlled transformation of the solution into a polymer gel matrix, removal of the formed polymer matrix to obtain a powder, and calcining the powder to obtain a pyrochlore.  The Pechini method, however, is labor intensive and inefficient from a cost perspective due, in part, to the formation of a gel phase.

The above statement characterizes the prior art Pechini method by embellishing the problems with the method.  Oftentimes, if the prior art presents a large problem, then the resulting inventive solution can seem more consequential.  The bigger the problem, the better the solution.

For the Prior Art section, it is imperative for the inventors to identify all of the relevant prior art.  There is no need for the inventors to characterize the prior art.  All that is needed is a listing of the prior art references, which allows a patent attorney to review the prior art and to describe the invention in a manner that is different from the prior art.

I now confidently respond to the question, “What’s an invention,” by answering “inventions are ideas that provide solutions to existing problems.”  Invention disclosures that are drafted with this viewpoint in mind lead to stronger patent applications and more efficient prosecution of such applications.

More information about the invention disclosure drafting process can be found in Michael’s presentation given at the 5th GPCA IP Awareness Workshop in September.