Chapter 2. Formulating the Idea
In order to formulate an inventive idea, you must first identify a problem and then identify a solution to the problem. The solution must be novel in order to be granted a patent. An inventor must apply two tests to determine if the solution is novel:
Is this idea one that those skilled in the art would have[2] considered?
[2] The question of “would have considered,” is very subjective, but suggests that the solution might be obvious to experts and they would have naturally thought of this. The purpose of this test is to establish that the solution is genuinely non-obvious.
These two questions have powerful implications when determining if an inventive idea might be granted a patent. The first question tests novelty of the inventive idea. The second question tests non-obvious aspects of the idea. An inventive idea must pass both tests in order for the idea to be granted a patent.
How does anyone know if they have a valid problem and a solution worthy of a patent? Let's explore a prehistoric invention—fire—to answer this question. The Neanderthal man discovered that fire could solve many problems:
Fire provided heat to warm bodies in harsh climate conditions; the problem was that being cold was uncomfortable, and it was discovered that fire emitted heat.
Fire burns skin, and with this being discovered by mankind, it causes fear due to this pain. However, due to this pain factor, fire provided a means similar to a weapon, in terms of using it to intimidate and herd animals. With this newly discovered practice, man could then force them (through fear) to move to situations causing their death (e.g., driving them over cliffs). The problem invited a solution for hunting food.
Fire provided a means for cooking food; the problem was some raw foods were non-palatable, and oddly enough, seemed to have rendered more flavor when heated or cooked.
Fire provided a means to see in the dark; the problem was not being able to see in the dark.
Fire provided a means to create a charred-coal type or material from wood. This provided for the ability to use this newly discovered dark material for writing symbols and marking on cave walls, a new form of graphical communications. Henceforth, allowing for early mankind to have the capability to mark up, or “trademark,” a cave wall or pyramid, thereby stating ownership and certain rights expressed in the hieroglyphics left on the cave walls. The problem this solved was related to not having a satisfactory written means of graphical communications, and expression of thought.
Fire solved problems that those skilled in the art at that time had not yet considered. Were each of these solutions turned into a patent? No—because there was no patent process available; however, fire was an invention.
Let's take a closer look at this example. Are these examples of the uses of fire able to show us the difference between an engineering innovation and an invention? An engineering innovation is taking something and figuring out a very creative way to use it, yet using it in the way that the item (or idea) was intended to be utilized. A patent is related to a new idea, using it in ways that those skilled in the art have not yet considered and in non-obvious ways. So was fire used exactly as intended by mankind in prehistoric days? Or, in these examples, was fire used beyond what those skilled in the art might have originally considered?
The discoveries we have just discussed involving fire included a means to warm the body, prepare food, hunt food, fight, provide light to see in dark periods, and communicate. Of course, consider a lightning strike somewhere, which would have obviously shown early mankind the values and effects of fire. One could again argue, however, that the expression of an idea to chase animals over cliffs in order to lead them to their death for purposes of harvesting food—the argument being that this method of hunting was a non-obvious expression of the ideas surrounding fire. This might then constitute the worthiness of a patent (had there been a process during this prehistoric period). Warmth would have also been discovered by anyone including those skilled in the art of fire, simply by stepping within close-range of a fire. The same concepts apply in using charcoal for written communications; it expresses a new and unique idea. Charcoal, created from wood by-products following a fire is a method or expression of it.
An interesting point here is that fire is too broad to be patented; it is not a unique idea. The expressions of the idea and the claims on how to use it, however, would be unique, and thus possibly worthy of patent considerations.
Several forms of ideas require special types of attention and protection. For example, copyrights are simple to file and will last from 95 years to 120 years after the inventor's death. If you are the originator of an expression, or a piece of text, you own the copyright. The idea expressed, however, is not protected by the copyright.
A patent protects the expressed idea, but there is a procedure to obtain a patent. First, it has to be novel, non-obvious, and useful. Patents last for 20 years and can cost (in the U.S.) from $280 USD to $50,000 USD to file and obtain. There are also patents related to government secrets and/or military secrets, which are handled in very sensitive ways, different from the normal patent process. However, these types of government and military patents are beyond the scope of this book.
Sometimes, litigation costs can far exceed the costs of filing the patent, especially in the case of very high-value patents. The competitive nature of a high-value patent versus a low-value patent invites some intellectual property rights management situations to occur, depending on the strength of the “claims and teachings.” Obviously, a high-value patent is far more valuable to protect than a low-value patent; a high-value patent may, therefore, be more volatile toward a state of litigations than a low-value patent would be. The claims serve as the basis for any breach of invention ideas, so it is very important how exact the patent claims are written.
Patent claims are written using a specific language[3] style and usually constructed by a patent attorney, or a patent engineer. As a simple example, we might “claim” a vehicle as a unit comprising There is no specific number of claims that need to be associated with an invention idea; rather, the legal counsel determines the appropriate number. Numbers of claims are always proportionate to the breadth and depth of the idea being described. It is the “claims” that are contested in a court of law regarding infringement on an idea. An infringing device embodies (at least) each and every element and function of the claim. Therefore, infringement would have to invalidate each and every claim, so there is a legal advantage to making broad claims. The goal is to have the broadest claims you establish.
[3] TIP: This can be general discussion of the problem, solution, and novelty of an algorithm in a pseudo language of a sort (like items 1–3 in the list). You are not required to supply any “codes” to file a patent; simply identify the problem and the solution, and then begin to explain the logic (if a software program) so a programmer can later write the codes.
A chassis
A petroleum and/or electric engine connected to the chassis
A set of four wheels connected to the chassis and engaged responsive to operations from the gas and/or electric engine
Trade secrets are free to establish and will endure until someone discovers it. A trade secret is a secret you keep and hence has no official status or public view. The recipe for Coke or the recipe for Campbell's Tomato Soup are typical examples of a trade secrets. Only a very few employees of these companies know the secret, and usually the secret is held in high confidence within the company claiming the trade secret.
Registering a trademark can officially protect names, acronyms, or symbols that identify products. Try checking your favorite cereal box or beverage for as many trademark symbols (™) as you can find. Just like copyrights and patents, trademarks can also be licensed and sold. Trademark searches can be performed at numerous sites; one primary site for this is the U.S. Patent and Trademark Office.[4]
[4] For more information, please reference http://www.uspto.gov.
Let's take a closer look at the different types of intellectual property and how compare to each other (see Figure 2-1). A copyright simply protects the expression of an idea; a patent protects the idea. A trade secret is an idea that is protected but only if maintained as a secret. A trademark protects the name or the symbol being use and officially restricts its use to the owner.
Figure 2-1. Common forms of global intellectual property classifications.
