Do you know what your invention is?

When clients want a patent I first ask them to explain their invention. Nine out of ten clients do not know what their invention is. Generally, clients can explain how their invention works, but don’t have a good understanding of what are the new features of their invention. A patentable invention must have a new feature. A new feature may be a new combination of old features.

In my experience, the invention generally emerges from the patent specification during its examination by a patent office. The chance of a patent being granted increase with the number of likely new features included in the specification. Examination generally reveals that some of these likely new features are not in fact new. That is, examination generally weeds out old features and the invention emerges.

Consequently, it is preferable to form a preliminary view on what the new features of the invention are likely to be, and to make sure that these are well described and their advantages explained. Also, it is more likely that a quality patent application can be prepared quickly and efficiently once likely new features have been determined.

Here is one way to determine what features are likely to be new. First, find documents describing the closest things to the invention. Then work out which features of the invention are not described in any of the documents. There are good online search tools that can assist, examples of which include GOOGLE, and the free online patent document search engines PATENT LENS and ESPACENET, the later of which is administered by the European Patent Office.

I recommend clients use the online search tools as a first step towards establishing the likely new features of the invention before they engage me. It may save them money and result in a better patent. I also recommend in some circumstances that further professional searching be performed because professional searching generally uncovers relevant documents not found by the client’s search.