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First Be a Skeptic; Then Be an AdvocateA truism of the patent business is that if a problem is one of long standing, and could have been solved years ago, it probably was! Thus an attorney presented with an invention that solves an old problem and that was readily solvable with old technology should bring a healthy dose of skepticism to the invention analysis process. The role of the attorney as skeptic also extends to the question of obviousness under 35 U.S.C. 103. The attorney’s experience may tell him that the invention as broadly presented by the inventor would likely be deemed obvious based on the prior art. The inventor needs to be challenged in such a case to articulate, with the attorney’s help, why an invention so broadly defined would not have been so obvious after all. The point of such skepticism is not to talk the inventor out of seeking a patent. Indeed, the attorney’s role is to be the inventor’s advocate and help him or her secure whatever intellectual property that he or she is entitled to. The point of such skepticism, rather, is to open a dialog that will bring to the fore possible arguments against the obviousness rejection the attorney believes is likely to come if the present broad view of the invention is maintained. More information about the book Invention Analysis and Claiming: A Patent Lawyer’s Guide |
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