Invention Analysis and Claiming:
What's the Invention?¹

By Ronald Slusky

Almost every patent matter—whether involving procuring a patent, licensing the patent or enforcing it in court—brings up the same fundamental question.

What’s the Invention?

The question is simple, but deceptivelyso, because the answer is sometimes maddeningly elusive. Yet the skill with which the answer is pursued is crucial to maximizing a patent’s economic value. A skillfully discerned answer to What’s the Invention? results in a patent claim that secures protection far beyond the inventor’s specific embodiment(s) to ideally encompass all alternative designs that incorporate the essence of what was invented. By the same token, an incomplete or wrong answer may create loopholes in the patent that allow other to incorporate the essence of the inventor’s teachings in their own products without infringing the patent.

The difficulty in answering What’s the Invention? arises in part because from the patent perspective an invention is not a physical thing but a concept. Even the inventor may not appreciate what it is. Scientists and engineers are typically focused on getting some product designed and built, or a material formulated and tested, and getting the thing to market. Abstract notions like “inventive concept” are largely irrelevant to someone charged with working out the bugs, finishing the project on time, a...