How to Articulate Multiple Solutions for Multiple Problems

Resist the urge to present the “marketing” side of the idea. Almost invariably when invention descriptions are presented this way, they are far too broad to concisely state the problem, solution, and novelty. Patent evaluators are not inclined to be able to easily identify the claims of an invention from these types of broader descriptions. This is especially difficult when multiple patent applications related to a common area are being considered.

Once the multiple problems are clearly defined, the next step is to generate ideas to solve these. Most likely (if you are working with a patent spawning team), the team already has some ideas that seem like winners, but do not close the door on new ideas due to preconceived notions. These preconceived notions are, however, extremely important for all the team members—because to generate their own ideas first, before brainstorming in the larger group, improves the potential for novelty in the end result.

Brainstorming (for those unfamiliar with the technique) is a word that refers to the activity of opening your imagination to produce as many ideas as possible without processing any of them in the first round—just getting them out is the goal. Most of the ideas may end up being not exactly what you are looking for in your mind, but there will be some excellent ideas that you may discover through the process.

Once one or more problems are envisioned and many solution ideas have been generated, try to be more concise, hard-hitting, and to-the-point regarding claims of novelty associated with each of the solutions. Look closely to see what you are claiming to be the problem and its relationship to another problem, and make sure you have made the respective number of proposed claims in your solution(s) to address the proper aspects of the problems. Ensure the defense of these novelty items includes other prior art examples that might be close, or even examples of where the prior art is weak (may be, or may not be related) or the prior art is simply non-existent.

Communicating the multiple ideas clearly is paramount and the single key to success. Think of it like this. The elevator pitch: This requires the inventor to verbally articulate the individual idea's in a very few minutes. Imagine you just stepped onto an elevator (or lift), and the person already onboard this elevator is someone you must convince that they need your invention, prior to them arriving at their floor. So you only have a few minutes to convey the problems, solutions, and items of novelty. Prepare yourself for this as the ideas then become clearer in your mind.

Intersect the solutions back to the problems and do this to prove your solutions solve each of the problems in unique and independent manners. Contrast the solutions to what has been done in the past; yet, (most importantly) show without a doubt how your idea is different from what has been previously filed. Show this in such a way as it would not even be obvious to experts in this area. The solutions and claims you make as to how you have solved the problem must be unique, and the inventor has to be able to clearly explain this.

The best disclosures will always give the “big picture,” and then they will describe the prior art and the invention with the technical details necessary to articulate the conclusion. Make sure you show how the invention differs from any prior art. In some disclosures, a common problem with an inventor is that he or she sees chunks of the big picture, only a brief discussion of related prior art, and often not enough technical details to clearly articulate the solution(s). All of this is further confused by references to other disclosures. The prior art that needs to be discussed for the invention is how each problem is solved in a systematic way and how it is solved well in this environment. Ensure that the proper level of detail is directly referenced in the disclosure. That is, if this is the level at which the solution differs from the other solution(s), this is the level of technical detail that should be in the disclosure.

The best disclosures focus on the technical descriptions and are not overrun by legal jargon put forth by inventor: Leave the legal descriptions to the patent attorneys. Inventors should focus on writing a good, solid, technical description of the invention. When patent attorneys are forced to read legal jargon (from inventors) in a disclosure, analyze the legal jargon to determine what it means, and then rewrite it—this is counter productive. We have no doubt that many inventors can use proper legal jargon, but at the same time, legal jargon should not be a substitute for a good, solid technical description. This inventor-placed legal jargon adds an extra step of analysis by the patent attorney that is neither productive or of much value.

The best disclosures (when submitted in bulk numbers or as single filings) are concise, hard-hitting, and to-the-point. In some early disclosure drafts of the inventor(s), there may be repetition of the same ideas using different terminology within a single disclosure and across multiple disclosures. What is actually preferred is a more concise definition of the problem(s) and solution(s). This, in turn, leads to a more productive and concise prior art search, which then leads to a better application, which then has the best chance of issuing the strongest and most original claims. One suggestion is that if specific passages of any disclosures are included to answer predicted questions from an evaluation team, then help these teams (or the patent attorney) by including those predicted questions in the disclosure.

When describing multiple, related ideas, the best disclosures have the same technical description of the entire invention but separate titles and intro paragraphs that describe each problem to be solved, as well as how the problem is to be solved. This method more effectively forces all the related disclosures to go through the process together and is more likely to provide an enabling embodiment for the inventor. As you do this, ensure that you know the difference of proposing an engineering innovation, versus a patent. We discussed this in previous chapters. Ensure that all of your documentation is recorded as clear as possible, and shared with the wider team.

In addition, in the case that counsel disagrees with the way that the inventor has defined the multiple inventions, inventor has really only invested a couple of paragraphs worth of time into each disclosure beyond the common description. In our experience, even though an evaluation team may see, let's say, four related ideas as separate, the patent attorney may suggest bringing together of these ideas after seeing the search results—or for other relevant reasons. If the ideas are merged, then when counsel gets the merged ideas, they may not have to merge the description of the invention, which is less work for everyone.

In conclusion, the best invention disclosures are organized for efficiency. Bulk invention disclosure submissions are often created as a package of multiple inventions and considered as a holistic group. In corporate environments with intellectual property incentive programs, patent attorneys, and inventors may sometimes be receiving flat fees for each application they file. Submitting patents in bulk form is often a best practice utilized to address (for instance) a new technology (e.g., biomedicine, grid computing) or a wide area of technologies. This bulk submission process is most efficient, especially when both parties are working towards efficient use of each other's time. This is critical when dealing with many inventions in a single lot; and it is at this stage that you are, in fact, truly “mining group gold.”