Mr. Ronld D. Slusky, in his book Invention Analysis and Claims (published by America Bar Association), recommends that patent attorneys use a problem solving statement to identify the ‘inventive concept’ of an invention. We agree.
The claims in a patent define what is the invention protected by the patent. Ideally, the claims should protect the ‘inventive concept’ underlying the invention and not limited to a specific embodiment of the invention described in the patent.
A problem solving statement helps the inventor and patent attorney identify the ‘inventive concept’. It is expressed as follows: ‘The problem(s) of _______ is (are) solved by ________. ‘ It most instances, there are several problem solving statements for an invention. Often, different problem solving statements can be written from different perspectives – the user, the manufacturer, the buyer, the licensee, etc. By drafting and re-drafting the problem solving statements, eventually a problem solving statment that clearly identifies the invention concept will be found.
In addition to identifying the ‘inventive concept’, the problem solving statement also (1) helps the patent attorney draft a suitable Title, Background Section and Summary Section in the application; (2) draft fallback claims; (3) helps draft a full suite of claims; and (4) develop broad language that can used in the Claims Section.