Problem, Solution, and Novelty and Uniqueness Test

A patent is generally divided into three separate areas: An identifiable problem, a unique solution, and a solution that is novel and non-obvious. This test of being “non-obvious” implies that those skilled in the art would not have naturally thought about this idea.

Perhaps it's a clear and beautiful day in your area. You are relaxing, listening to the daily news on the television as you read this book. Suddenly, a commercial on the television appears within range of your hearing. It is distracting, and you feel like the topic is playing on your intelligence. To many, this is a problem. It is highly probable that many others also can relate to this problem. So let's try to stay with this example for a few chapters and see what we can discover in terms of inventions.

This commercial you may now be in range of is far less than pleasant to listen to, especially while you are trying to think in parallel through this line of thought. Here, you were simply trying to concentrate, while comfortably listening to the news in the background, and this obtrusive commercial on television broke your thought train. What an annoyance, but look closely at the situation. This seems to be the easiest time to invent, when something annoys you and you are able to find a better answer to the problem than what is available today. So you then ask yourself: What might be done to provide an innovative solution to this problem? You also wondered (some lateral thinking) if this holds true with radio as well, but simply leave that thought for now and focus on the TV.

I could no doubt fix this problem if, on my channel operating device (mine is handheld, but the device could be of many types), I had a one-touch button I could press as soon as I first noted the undesirable commercial. I could press this button just once to begin program sequence to leave this commercial behind, and from then on, my invention would tell my TV to switch every time this commercial comes on my set. For that matter, any commercial I do not want to watch again, I could reprogram to my choice, each time the commercial appears for the first time—never to see it again.

So, let's see...I could press this button and automatically program a path away from this commercial, forever, if I chose to do so. I also could select an alternate switch path, should my first choice channel redirect also have an undesirable commercial on it. But, we then ask ourselves, is this a violation of “rights” or privilege of any sort? In America, freedom of speech is one principle that stands strong. Therefore, commercial advertisers always will have the right to produce content as they wish—as do the networks have the freedom to transmit this content. That is, of course, within the boundaries of Federal Communications Commission laws.

Whatever we end up inventing must have benefits for all three sides, the consumers, the advertisers, and the networks. Yet it is the consumer who is the target of this advertising; therefore, we should enjoy the freedom to pick and chose what advertising content and advertisers we wish to receive.

The solution: How would we do this? We know or can research that a television commercial is delivered to a television set, through a network, probably through some means of network packets. We can assume that a packet has a “header” and a “trailer.” And, in this header, the identification of the commercial is data that is known, as is the time or duration of the advertisement. So, in theory, I could change to a different channel as soon as the ID of the undesirable commercial is confirmed and then return to that channel I was watching at the end of the undesirable commercial slot. All this could be done automatically, once programmed into this new invention, the one-touch device.

Now once we convince ourselves this idea might be worth looking into, we want to next make sure that to the best of our knowledge, no one else has thought of this or, if they have thought of this, we are willing and able to invent a way around their prior art in order to create a stronger, yet unique invention of our own. Perhaps I may even reference their ideas in order to establish the grounds of novelty in my idea.

The first step we engaged is a problem in need of a solution. At this stage, there are a few documentation items one may want to consider. What is the problem solved by this new invention? Describe it in clear, concise, hard-hitting, and easy-to-understand terms. Describe known solutions to this problem (if any). Describe the drawbacks of such known solutions or why an additional solution is required. Cite any relevant technical documents, prior art, or references. Explain where the technologies seem to be headed in the areas of your idea.

Next, briefly describe the core idea of your invention (saving the details for the final discussions). Describe the advantages of using your invention, as opposed to using the other known solutions. Review this level of understanding; think in terms of the understanding levels of your audience (e.g., patent engineers and patent attornies) to make sure they understand what you are describing. Tell them what you have told them for sake of clarity.

Describe how your invention works and how it could be implemented, using textual descriptions, illustrations, and process-flow charts (as appropriate). Focus^[6] on the novel aspects of your invention. Resist the urge to begin to wander about marketing aspects of the idea or maybe how something else might do it another way. Focus, focus, focus on your idea and its novelty.

^[6] TIP: If you can establish an algorithm in your invention, document this algorithm in the write-ups and use a pseudo code descriptive language to explain this algorithm. Often times, generically described algorithms can be utilized as a part of the licensing claims of the patent.

Now that you have focused tightly on the new idea, you might want to consider what is known as the “elevator” presentation style. That is, pretend you are on an elevator (or lift) and, from the first floor, you have pressed the third floor button. You now have to explain to someone your idea so this person understands it before the doors open at the third floor. When a patent attorney first hears your idea, the speed at which he or she can grasp the uniqueness of the idea all depends on how well you explain it.

Be prepared to clearly present and defend your idea in a short period of time. Any patent evaluator appreciates a concise, hard-hitting, to-the-point description of new inventions. To be able to explain the problem, the solution, the novelty, and why it is not obvious to those persons skilled in the art is fundamental to being able to sell your idea and getting it properly documented in terms of claims & teachings.

The novelty in the patent is proven by a contrast to that of prior art, in conjunction with clear discussions on how the solution solves the problem. We will explore these aspects in Chapter 3 in greater detail.