A Nobel Prize laureate’s advice to inventors: Understand your claims!

During my career, I, like many inventors, have understood that inventions were self-evident. Come up with a good idea bounded by the following bulleted guidance from the United States Patent and Trademark Office¹ (USPTO) and you have an invention. On its face, it’s pretty simple.

• Novel: idea is not within the public domain,
• Utility: has any possible utility,
• Non-obvious: to those knowledgeable in the area of art of the invention.

That was enough counsel, and it was the mechanism I used as a guide whether filing an invention disclosure on an idea made sense. As I have learned, however, this was not always a foolproof method to get my invention disclosure filed for a patent by HP or other corporate employers. You see, the requirement of the invention being “non-obvious” is a sticky wicket. Please read my previous article for Laser Focus World on this topic² for a deeper look at the challenges this requirement poses, not only for the inventor but also for the corporate legal department making this evaluation prior to filing a patent on your idea. It is where I have found the most resistance by my employers related to an idea that is novel and useful filed upon.

Here is my story about how I learned about the importance of patent claims to the inventor, and that it really is a next-level skill communicating the non-obviousness of an invention to patent attorneys. Perhaps even more important is communicating this to your corporate inhouse invention/IP reviewers. Beyond this, having draft claims within your invention disclosure for the patent attorney writing your patent application cuts to the chase about what your invention is in terms that they will find most direct.

Insight from a Nobel Prize laureate inventor

About six years into my engineering career, I started my own product development business focused on electro-optic instruments. I wanted to file a few patents on my own and, due to budget constraints, I decided it was time to learn about writing patents, so I started reading. My primary sources are the following:

• USPTO – Patents & Inventions³—or now Patent Basics Page—legacy paper booklet in image (my source)
• Patent It Yourself⁴ Book—David Pressman Patent Attorney—NOLO Press

With these learnings I put together a draft patent application for an invention I created for one of my clients. It was titled “Machine Vision System for Retail Key Blank Identification.” My next step on this journey was to find a patent attorney in Dallas, where I lived at the time, to review this attempt and provide feedback and a quote ($) for their help. I had a sense I would need it! Needless to say, in retrospect, my initial patent draft did not meet the mark.

I was referred to a Dallas patent attorney by a colleague. I called this patent attorney and, after hearing my situation and that I was just starting out, he agreed to meet me for a reduced fee. The next week I headed into his office in the Renaissance Tower Building in Downtown Dallas. My initial thought was “this is pretty swanky,” and with a chuckle of laughter I mused that I would never be able to afford to have this guy write my patent.

I walked into the office and was directed to the waiting area by the receptionist. An older gentleman sat scribbling on a yellow pad across from me. After about five minutes, he got up to go to the restroom. He was a big guy, maybe 6’6”; I looked at him and thought he seemed familiar. While he was away, I asked the receptionist about him. “That’s Jack Kilby, the inventor of the integrated circuit,”⁵ she informed me. Being young and possessing less reticence than I do today and having just left the employ of Texas Instruments, where Mr. Kilby invented the IC, I thought, “Hey, I should introduce myself.” When he returned, I walked over, introduced myself, and informed him that I, too, had worked for TI and was working on my first independent patent. He was genuinely gracious and friendly, and invited me to sit next to him to tell him about what I was working on. He courteously also asked if I wanted to share about my invention and patent?⁶ Share I did, and we talked for maybe 20 minutes until I was called to join the patent attorney with whom I had my appointment. As I parted and thanked him for our discussion, he stopped me and provided one piece of advice that is the genesis for this blog post: “Fred, if you want to master invention, you need to understand how patents define an invention. Read about and learn about the claims at the end of a patent. They define the invention. Actually, this is what I am drafting now for my patent attorney, so he understands clearly what my invention is. It is critical.”

The meeting with the patent attorney went well and he offered to redline my draft for a reasonable sum. He too commented on what a fine gentleman Mr. Kilby was and how I had been fortunate with my chance meeting. I left pondering Mr. Kilby’s advice to learn more about these claims.

Patent claims

Patent claims are found at the end of a patent and describe the invention in terms of what it is comprised of, or its elements, and how these elements are dependent on each other to obtain your utility. Historically, there only needs to be a single unique element in your combination from those described in any previous patent to be a new invention. If this is the case, and you can show that novelty via a patent and literature search, then the argument for being a non-obvious patentable invention is “if it were obvious, then someone would have combined these elements together previously within the public domain.” Defining the invention in terms of its combination of elements, including the novel elements, is, from a legal standpoint, what the invention is. This was the critical idea Mr. Kilby communicated to me that day as being necessary to understand if I wanted to master invention. If you can define your invention in terms of its elements and which one(s) are unique to the combination, you have an invention and should include this insight within your patent disclosure.

I could dive into further detail on the mechanics of a patent claim now. This is important to learn if you are to do a good job of drafting your own claims to communicate your invention in the most effective manner, as Mr. Kilby suggested. Instead, I suggest you read the following short article by patent attorney David V. Radack and published in the Journal of Materials (JOM) in 1995.⁷ Important concepts if you want to be a better inventor!

I used the qualifier “historically” in my earlier description of needing only one unique element in the combination of elements describing an invention to make it patentable. Furthermore, non-obvious as well. All true and empowering for an understanding of invention. But in 2007, this clarity was made a bit murky by a ruling from the U.S. Supreme Court in a patent case titled, “KSR v. Teleflex.”⁸ It basically held that combining what they called two obvious elements or features could no longer be considered an invention. The court termed this “ordinary innovation,” and you could not patent it. And the invention nut became much harder to crack. We moved from the invention being non-obvious to the elements describing the invention needing to be a non-obvious combination. I believe that if the utility of your invention is compelling and is a true innovation, a market differentiator, then we circle back to the previous argument presented stated a bit differently. ”If its elements were known and an obvious combination, then someone would have combined these elements together previously within the public domain.” The level of innovation delivered will be the final arbiter.

Takeaway about why this matters

Clear and succinct communication is important not only with management and customers, but is also important when describing intellectual property ideas or inventions to their audience. You should not lose sight of this. Communicating via Power Point, those organizational ideas and plans occupy hours of your time because it is important that the essence of your idea or topic is understood by the intended audience. Using images, examples, and terms they understand readily and easily matters.

When communicating to the intellectual property legal community, I carry forth Mr. Kilby’s advice. Learn about claims and write your own to ensure your invention is communicated explicitly and in the same parlance as within a patent. There will be no misunderstanding of what your invention is this way. I will temper this with: it’s not a must for writing a good patent. Patent attorneys are paid to figure out what your invention is and write the claims. Regardless, there is no doubt it will make you a much better inventor, even possibly next-level, or superpower your skills within this area! I have found this approach to be of great benefit and, more compellingly, Jack Kilby did.

It is within all of us to innovate. Today is a good day to file an invention disclosure. Just do it!

REFERENCES

1. See www.uspto.gov.
2. See www.laserfocusworld.com/55270139.
3. See www.uspto.gov/patents/basics.
4. D. Pressman, Patent It Yourself, NOLO Press, Berkeley, CA (Jul. 1990).
5. https://en.wikipedia.org/wiki/Jack_Kilby
6. Please note, you should not share your invention prior to patent filing with others unless you have a confidentiality agreement in place. In practice this is rarely an issue unless that sharing is the impetus for wider public domain disclosure. My behavior here is probably not a good example of the strict confidence required by statute. Although, I was probably ignorant of my own foible at that time.
7. See www.tms.org/pubs/journals/jom/matters/matters-9511.html.
8. See www.nolo.com/legal-encyclopedia/combination-invention-patentable-patents-29891.html.