Menlo Park Patents Blog:

What is the invention?

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Initially determining what the invention of the inventor is appears to be a simple question but commonly is fraught with problems.

Most patent practitioners focus on the inventor’s solution or idea. This usually results in a patent that is focused on the specific embodiment that the inventor has designed. This in most cases does not encompass the totality of the invention and can result in claims that are too narrow and specific to the inventor’s current embodiment. The goal of any patent is to secure the broadest claims possible for the invention which encompasses the inventor’s current embodiment and if possible future embodiments.

If the claims can anticipate what a competitor could create to avoid infringing on the inventor’s claims then that would be a patent which provides significant value for the inventor and can result in a multitude of possible revenue streams for the patent including protecting the inventor’s invention and the associated sales. Additionally, possible revenue streams from licensing opportunities could arise from licensing the patent to competitors or for alternative uses.

To achieve this broader vision of what an inventor’s invention is, the patent practitioner must ask the question differently. Therefore the question of “What is the invention?”  becomes the patent practitioner  capturing the invention in the form of a problem statement such as “The problem of ‘X’ is solved by Y”.

Once the inventor and patent practitioner can formulate the problem statement then they can define the problem that is solved by the invention and craft a specification and associated claims that are focused on the broader solution.

For example if we look at the evolution of blood glucose monitoring the initial patents focused on the formulation of color metric test strips. However, derivative technologies can use similar chemistry to achieve the goal of determining what is the glucose level of a blood sample. Instead of writing the claims such that they define a colorimetric change that could be associated with different glucose levels, a better problem solution would have been to write the following problem statement:

“The problem of determining the glucose level of a whole blood sample is solved by utilizing a chemistry to first oxidize, catalyzed by glucose oxidase, to produce gluconate and hydrogen peroxide.”

This is a problem statement that can cover both colorimetric and electrochemical glucose testing methods which would make the resulting patent far more valuable.

If you are looking for that patent practitioner who can help you convert your idea into a problem statement then Menlo Park Patents is the firm for you.