Secrets of a Patent Attorney
We patent attorneys meet inventors and tell them if we think their idea is “patentable”. But how do we know? How do we figure out what is inventive?
Our job is to listen to an inventor’s description and, from it, to grasp the essence of the invention. We summarize the inventive aspects of the invention by defining the difference between the invention and the prior art.
Where do we get the analytical mindset? From many places, but mostly from academic studies.
In the Mechanical Engineering Department of MIT where I studied, we analyzed engineering systems. We found their “poles and zeros” on the complex plane. We found their natural frequencies, the frequencies where a system will react uncontrollably. We learned to find the eigenvalues of a matrix, which define its basic behavior. We were taught to find the “essence” of a system, the ideal representation of how the system will behave.
This kind of analysis is not restricted to engineering. Remember literature class? Part of the analysis of any piece of literature is to find its motifs. Another part is to define the author’s point.
MIT taught me that there are many ways to describe a system. The initial years of study were spent learning how systems changed over time, and we measured them with time domain signals. Next, we learned how to convert the time domain signals into frequency domain signals, to obtain a valuable different perspective.
Then came Junior year, when I studied both thermodynamics and fluid dynamics. These fields don't use the time domain model at all. Instead, they look at the input vs the output of the system. It took me a while to internalize this model. I recall looking over a bridge at the Charles River below and watching a stick pass under the bridge. “Ah”, I thought, “following the stick as it flows under the bridge is a time domain view. But noticing the many items (including the stick) passing under the bridge from my current location on the bridge is the input/output view”. I had begun to change how I viewed the world.
The Black Hole War, by Leonard Susskind, discusses his debate with Stephen Hawking about the nature of black holes. At one point in the book, Susskind mentions that physics requires changing your way of thinking in order to understand a new concept. Changing your frame of reference or perspective changes how you understand the new concept.
This is what we do in patents, all the time. To see the inventive concept, rather than the product itself, requires looking at the product from a different perspective.
Take the all-in-one printer. It combines a fax machine, a scanner, a copier and a printer into a single machine by recognizing that all four separate machines have a similar printing/copying process. If so, what is inventive about it? After all, the separate machines existed previously.
The straightforward way to describe the all-in-one printer as a new combination of a scanner, a fax machine, a copier and a printer. This is true, but it is not compellingly novel.
Let’s change our frame of reference. Consider the new elements that the designers had to add to make the combination work. They had to add a controller which selectively activates a scanner, a fax, a copier or a printer. Such a controller did not exist in the individual units.
Let’s broaden our horizons and consider the housing. What elements are in the housing of this combined machine that don’t exist in standalone units? Well, the part of the housing which holds the controller didn’t exist. And, the box holds two paper feeders (for the paper to be scanned and for the paper to be printed), a telephone connection and a data network port. This kind of housing didn’t exist in any of the individual units, though each unit had some of the elements.
Another example of different views of the same thing is the Hindu story of the Six Blind Men and the Elephant. In this story, six blind men go to see an elephant and each comes upon a different part of its body. Each compares the part he touches to something he knows. The blind man who touched the ear considers the elephant to be like a fan, while the gentleman who touched the tail considers the elephant to be like a rope. The story ends that the six blind men proceed to argue with each other about the definition of an elephant so vociferously that, in some versions of the story, they kill each other.
For our purposes, the six blind men gave us six ways to see the inventive elephant. Assuming each view provides us with a distinct difference over the prior art, we can write six claims, each to a different inventive aspect of the elephant.
With this in mind, how do we find inventiveness in a product? Some inventions are just brilliant. For them, straightforward is probably the best and easiest way to define them. Another way to find inventiveness is to list the features of the product the marketing department has gotten excited about, and capture the language they use to describe it. Marketers view a product with a very different eye, one engineers aren’t used to but patent attorneys can leverage.
Another way to find inventiveness may be to look at the product from inside out, to define an inner element or feature as the most important element or feature. An alternative view may be that an outer element, like the housing, is the most important feature. Sometimes it pays to look at just the elements which were added to make the product function in its new market.
Often, we are forced to change our viewpoint when an Examiner rejects the claims based on a new piece of prior art or a different understanding of the language of the claims. A willingness to view the invention differently enables us to overcome most rejections.