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September 27, 2004
Understanding The Invention: A Difficult But Fundamental Part of Patent Law. Part 2
This is a second of a two part post.
What are the lessons from this experience?
First, the patent agent/attorney should take the time to fully understand and comprehend the invention. This seems simple and straightforward, but is a complex and difficult task.
The invention must be viewed in the light of the problem to be solved and the state of the particular market. This requires that the agent/attorney understand the business of the client to understand the client’s perspective. The inventor sees the world in a certain way and implicitly recognizes the problem that his invention solves and often has a difficult time articulating that problem.
For example, let’s say the client/inventor has a new sawhorse. Only after knowing what is commonly sold in the market, how sawhorses are used by various consumers (do it yourselfers, framers, finish carpenters, painters, etc.), can someone appreciate the subtleties of having a slight angle on the folding legs helps. Further, those subtleties are better understood when viewed in the light of the various manufacturing operations required to build the product. Lastly, the marketing and sales of products like the sawhorse invention give another light to the advantages and subtleties of the invention.
When the patent agent/attorney understands those subtleties as viewed from the different standpoints, then the agent/attorney can begin to understand the unique features of the invention. All these factors require taking the time to understand the problems solved by the invention.
Understanding the invention itself often takes a good bit of digging and hard work. Again, the inventor generally sees the invention in light of all the similar things in his/her entire career. In many cases, the invention is plainly seen by the inventor who has difficulty articulating the inventive features.
Getting the invention out of the inventor is an art form. Sometimes, the invention is a combination of several subtle and minute improvements that take some time to appreciate. In some cases the inventor thinks they invented all sawhorses when in fact they developed a unique improvement using a slight angle on the position of the legs. Other times, the inventor has made a fundamental improvement to a technology that may be applicable to many different industries in many different applications, yet the inventor may be only focused on his specific implementation.
Understanding the invention, the inventor, and the marketplace are extremely important in serving the client well. In my sawhorse experience, I paid $5000 to learn this lesson.
I understand the position of the attorney in my sawhorse case. He was covering himself. He wanted no liability if he did not understand the invention. If he misunderstood the invention, had a search done, wrote up a detailed report, then sent me a bill for $2500, he could be blamed. By making me write it up, I was to blame and he was completely protected. He did not want that responsibility.
I choose not to practice patent law that way. I try to fully understand my client’s markets, their history, and their background as I try to understand and articulate the invention. I make sure that the client agrees to my verbiage and description, and we go back and forth as necessary to get a firm agreement. Once that is accomplished, I can do the search, write the patent, or advise them as required.
As a patent professional, I feel it is my duty to understand the invention as much as possible. Only then can I offer sound advice, draft meaningful and comprehensive claims, and get the best protection for my client possible. Anything less, in my opinion, is unconscionable.
Posted by krajec at September 27, 2004 06:52 AM
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