The Essence of Invention

Inventors and business owners are often their worst enemy when it comes to getting the right level of protection for their invention.

The Goldilocks Zone of patent drafting results in a Statement of Invention (SOI) in a patent specification that is broad enough that it captures the broadest commercial opportunities and narrow enough to be valid. The SOI is a single sentence that ideally defines a single difference between the invention to be protected and what is already out there. And unless the patent is just for deterrent purposes, that difference should give a competitive edge.

This is one of the most difficult skills to master as a patent attorney – and often foiled by the actions of their clients.

To craft a beautiful SOI, the patent attorney needs to:

a)       Know all relevant published information about similar inventions. This is not patentable material, and the knowledge is there to help the attorney distinguish what their client has - which is new and worth patenting. Sadly, often the client has prior published their big idea, limiting the eventual scope of patent protection

b)      Identify the key novel improvements that the client has invented. This can require a degree of interrogation as often clients do not recognise how clever they are, and that their improvements are patentable

c)       Rank the improvements in order of importance from a commercial perspective. This can be difficult without market validation, and paradoxically the action of market validation can be prior publication that invalidates the patent. Having a client with their pulse on the market in general really helps

d)      Then pick just the number one improvement to feature in the SOI.

e)      Craft the SOI

f)        Brainstorm with the client around how they could get around the SOI to ensure that it is robust

g)       Brainstorm with the client how technology can change over the 20-year life of the patent, so that the technical terminology in the patent will be timeless. This also opens the clients eyes to possibilities beyond their original concept.

h)      Then draft the patent specification

To summarise, to gain strong patent protection, businesses need to

         i.            Keep their ideas secret – especially the big concepts

       ii.            Keep track of the improvements they make and do not publish until the potential commercial value of those improvements and protection strategy has been assessed

     iii.            Know your markets

     iv.            Be prepared to challenge the patent drafting

       v.            Be creative as to future iterations of inventions