Providing information to your patent attorney to maximise your scope of protection
A key aspect in protecting inventions is to identify and then define the inventive concept: the features that differentiate the invention from what went before and which provide the invention with a technical advantage. Whenever you do something differently to how it was done before and the differences provide a technical advantage, however small, there is a potential invention.
An important step is for the inventor to explain what the invention does, and how it does that, to the patent attorney. In the UK, a patent attorney will have trained as an engineer or scientist before qualifying as an attorney, so they understand the technical concepts underlying an invention while being able to translate these concepts into appropriate legal wording that encapsulates the inventive concept.
Identifying the inventive concept
As almost all inventions are improvements on what was done previously, a common place to start is to discuss how things were done before the invention, then explain what is now being done differently.
An important issue is to pinpoint the advantages provided by the invention, which are not provided by pre-existing machines and other “prior art” (effectively, everything known before the new patent application is filed). These advantages should be linked to the differences between the present invention and what went before.
If there are several advantages, then make the attorneys aware of them all.
As part of this discussion, it is often especially helpful to tell your patent attorney about any technical challenges or difficulties that arose and explain how these were overcome, during development. It is particularly helpful to describe any technical hurdles that caught you by surprise, as overcoming these can help support the case for features being inventive rather than being the product of a predictable experimental route.
Similarly, if the invention has several different parts to it, was it difficult to make these work together? Through combining different parts, did you discover an unexpected synergy – i.e., is the invention greater than simply the sum of its parts? Can this be shown by comparing results generated by the invention with results generated by isolated parts? Are all the parts essential, or could some of them be left out without limiting the invention’s success?
Defining the inventive concept
Having established what is the heart of the invention, it’s then time to explore the scope of the invention – considering why you did it this particular way and are there any other ways in which you could have accomplished the same result?
Why did you do it in your chosen way, as opposed to that of any alternatives? Patent claim language can be drafted which covers not only the form of the invention you are likely to take to market (or to licence others to take to market) but also ways in which competitors might be looking to work around the scope of protection while achieving effectively the same result. It is also helpful to reflect on whether you have any plans for modifications to the invention in the future, and whether it would be appropriate to cover those in the present patent application, or whether they merit separate coverage in a later application.
A clear and precise definition of the feature underlying the inventive concept is required. The feature can be defined in various ways, including by its structure or by its function, that encompass variations that can be expected to work in the same way, and which can be expected to provide the same advantages. However, the feature cannot merely be defined as any that has the advantage. While inventions may be defined in terms of the technical means needed to achieve an advantage, patent offices often prohibit claiming inventions in terms of the underlying objective or the mere “result-to-be-achieved”.
Identifying what factors enable a particular component to provide a particular advantage, assists in extrapolating out to other components that share that common factor. For instance if it is identified that what makes dyestuff Y preferable to dyestuff X is because it has a double ring structure or because it absorbs light at a particular wavelength, the definition of Y could be expanded to all components having the ring structure or absorbance function.
On the other hand, when considering the scope of the invention it is useful to have in mind any potential limitations, or whether there are any circumstances in which it might not work. A reaction process may only work in a certain temperature range, or a foam may only be viable when it has a certain density. These critical ranges should be identified.
Additional Advantageous Features
As well as a main inventive concept, there are often related sub-concepts that support the main invention. It is important to discuss these with the attorney as they could provide important fall-back positions that can be used to bolster the strength of a patent or patent application. It is often necessary to limit the scope of patent claims to include additional feature either to secure grant of a patent or to defend a granted patent from attack. Identifying other desirable features, especially those attached to further advantages, is therefore important.
It is also useful to discuss what knock-on effects arise when introducing such sub-concepts. While switching from feature X to Y might provide an advantage, that advantage may be more acute in the type of products where feature V is also present; or including Z alongside Y might provide a further advantage not obtained by Y alone that adds further commercial value.
Conclusion
To summarise the message of this article: what is the “clever” feature of the invention, which (i) is not known from pre-existing inventions (the “prior art”) and which also (ii) provides the advantage? How can the clever feature be generalised, without resorting to merely: “something else which provides the advantage”?
An example to round off with: we could have, as claim 1…
“A two-bed interlock knitting machine, wherein each bed has a row of needles of alternating shaft length; and every other needle or every fourth needle in at least one bed is at an angle to its bed, in a range of 10 to 40 degrees.”
It may be worth exploring claims to a method of knitting biodegradable fibre-containing yarn; to the re-designed machine that works in the range of 20-25 degrees; and so on.
I hope you enjoyed this article. If you have any queries, please feel free to get in touch with me, or with your usual Abel + Imray contact.
We are a European firm and assist our clients to protect their IP rights in the UK, Europe and worldwide from our offices in the UK and The Netherlands and through our international network of trusted local attorneys. Get in touch if you would like to discuss your innovations and brand protection further.
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