Once you have consulted with your client and he has given you all the details of his invention it is advisable that you start with the drafting of the claims. To draft the claims you must establish what the invention is. In general, people think of an invention as something tangible. However, inventions are concepts.
FIG. 1:Inventions are Concepts
What must be done is to determine the inventive concept contained in the inventor’s embodiments. Once the inventive concept is determined, it must then be captured in the patent claims. If this is not done an infringer may be able to take advantage of the inventor’s invention without being liable under the patent (Slusky, 2012, p. 5). It is not always easy to determine the inventive concept. What is suggested by Slusky is that one must begin with the problem that the inventor solved (Slusky, 2012, p. 8).
Until the problem solved is not fully appreciated, the solution cannot be fully appreciated either. Many claim drafters focus on the solution. They start by drafting a claim to an embodiment. The claim is then subsequently broadened through a process of “pruning and distilling.” Narrow terms are made more general. For example “screw” becomes “fastener”. The pruning and distilling will result in a claim having a wider scope than what was initially started with. However, the inventive concept may involve functions and relationships not present in this claim. This can result in significant infringement loopholes (Slusky, 2012, p. 12). Drafting a broad claim that captures all the inventor’s embodiments is relatively simple. It is much more difficult to draft a claim that will capture future products before they have been invented (Slusky, 2012, p. 17).
The Problem-Solution Statement
FIG. 2: Problem-Solution Statement To Determine Inventive Concept
The problem-solution statement is used as a tool to determine the inventive concept of the invention. It is a one-sentence statement of the invention. It states as broadly as possible
(a) the problem the invention solves, and
(b) the inventor’s solution to the problem.
This is done without reading onto the prior art. It serves as a foundation for the patent application’s broadest claims. The problem-solution statement is formulated as follows:
The problem(s) of _____________ is(are) solved by ____________
For example, for the ballpoint pen invention, the problem-solution statement would read as follows:
The problem of a pen being able to write on rough surfaces
is solved by the pen having a spheroidal marking point.
(Slusky, 2012, p. 19)
FIG. 3: Drawing of Ballpoint Pen Invented by J. J. Loud
Another example of the fuel-propelled rocket invention the problem-solution statement would read as follows:
The problem of enabling a rocket to carry a large amount of combustible material while keeping the weight of the rocket as low as possible
is solved by successively feeding portions of the material to the combustion chamber from a separate casing containing the supply of combustible material.
(Slusky, 2012, p. 335)
In another example for the simple invention of a seating device having legs the problem-solution statement would read as follows:
The problem of a seating device that is not readily portable because of their bulk and weight
is solved by enhancing the portability by utilizing one or more elongated members (legs) as the support structure for the seat.
(Slusky, 2012, p. 352)
Slusky, RD. (2012) Invention analysis and claiming a patent lawyer’s guide (Second Edition) ABA Publishing. American Bar Association.
