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Patent Law: Anything Under the Sun Made by Man
Dealing with Inventor Myopia
This post is part of a series of posts relating to inventor interviews. Other posts include The Art of the Disclosure Meeting, Doing the Disclosure Meeting, and Setting the Stage and Issuing Warnings.
Often, inventors stumble into two different pitfalls. The first is myopia, where the inventors think their invention is much smaller than it may well be. The other state is one of grandiosity, where the inventor thinks too highly of the invention.
In this post, I will discuss myopia. In the next post, I will discuss grandiosity.
Myopic inventors see their invention as the only possible, the only logical, and the only rational implementation of a solution to a specific problem. The myopic inventor believes that nobody in their right mind would come to any other conclusion than the invention.
A typical exchange may have the inventor extolling the virtues of the simplicity and elegance of the implementation, or describing it to have all kinds of extra features. When I start to ask, “How would it work if it was done some other way?” The inventor replies by shooting down the idea by finding fault in any other solution.
As I ask if there are other ways to implement the idea, or when I suggest something different, I can see the inventors bristle with the thought that someone could be so ignorant as to not see the elegance of their solution. Some inventors can get outright belligerent and nasty, arguing to the death that no one would implement something other than the way they did it.
I try several different tacks when confronted with this situation. I will try to restate the invention from a very broad perspective and ask if the inventor agrees that my statement captures the invention. I then ask a few questions.
I will ask the inventor if someone did just a portion of their solution, should that person infringe on their patent? Often, the inventor will agree and I will start asking them which parts of the invention, if infringed, would be the most important. I will gently chip away at the different elements of the invention and have the inventor describe the different elements separately. I ask the invention to tell me which elements are more important than others. In addition to getting the inventor to think outside his box, this helps me capture a few independent and dependent claims.
The myopic inventor comes in the form of the inventor who is focused on a single product. Typically, this inventor has been working on the product for a long time and has been so focused on making the product work and getting it into production, that the inventor has not spent time thinking outside the box. When asked about a different way to do a specific feature, the inventor may state “We didn’t do it that way”.
In this situation I explain that I don’t care about the product that they are shipping today. For effect, I tell them that I don’t want to describe their product, but I want to describe their competitor’s product. I want to describe what the market will do when they see your product and try to copy it. (I don’t say “what will the product look like when your competitors improve on your invention” because that just gets the inventor to dig in their heels even more.)
I also explain that I don’t care about today’s product because I need to make their patent relevant 10, 15, or 20 years from now. I don’t know what technologies are going to be available two decades from now, but I need to describe their invention in a way that it makes sense with whatever technology exists.
Still another way to deal with inventor myopia is to start to explore where the inventor’s concepts may be applied in other technologies. I try to think of other industries that might use a similar process or device, or imagine performing the process on a micro or macro level. How would the invention perform if the device were microscopically small or as large as a house? Would the process work differently on a laptop computer or a large server farm? How would your invention look if it were mass produced and sold on the counter of every convenience store and discount store in the country?
Some inventors will take a couple of these questions or suggestions and run with them, generating many new insights and helping me to sift the critical components from the trivial. Many times, these meetings can be powerful brainstorming sessions that yield an invention that was much, much larger than the original concept the inventor thought we were going to discuss.
These questions have several different purposes.
The first point of the questioning is to flesh out and sort the important features from the trivial features. The important features may be from a technology standpoint, such as features without which the invention cannot function. In some cases, the important features may be business related, such as features that are readily copied or features that we know a competitor is likely to copy. The important features need to be captured in the independent claims.
The second point of the questioning is to set up expectations for the patent application in the minds of the inventors. My technique for writing patent applications requires deconstructing the invention to its essential features and reconstructing the description to include all variations of the essential features and any additional features. This technique provides the broadest and most efficient coverage of the technology space, and I want the inventors to expect to see that in the patent application. By having this conversation in the interview, the inventors are much more comfortable with the patent application when it arrives.
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