Engineers, in many instances, do not know exactly what they have “invented” when developing a new and innovative product.
From a broader perspective, this is perfectly understandable. The primary objective of an engineer is to create new products that will hopefully captivate potential customers. Identifying a specific concept among the numerous problems and associated solutions developed, which both meet the requirements for patentability and hold value for the business, is not always a straightforward task.
Given the complexity involved, I tend not to ask an engineer directly, “What did you invent?” This would be similar to a mechanic asking a customer, “Which parts do you believe need replacement in your car?” Instead, I prefer to uncover key concepts through a series of more detailed questions focused on the product itself and the contribution of each engineer to that product. Here are some of the questions I use to get the process started:
- Question: What were the most resource-intensive challenges encountered during the development phase?
- Rationale: The aim of this question is to unearth concepts that are new and potentially novel from a patentability perspective. Typically, the problems that consume the most resources are the ones without readily available off-the-shelf solutions. If an engineer had an easy solution at their disposal, they would likely have used it instead of investing significant time and effort in solving the problem themselves.
- Question: Are any of these problems likely to be encountered by others attempting to develop the same feature?
- Rationale: The purpose of this question is to identify problems and their associated solutions that are likely to hold the most value for patent protection. Solutions to generic problems that others are likely to encounter (e.g., securing a communication channel between two devices) are more valuable than solutions to narrow problems (e.g., fitting a specific chip on a specific board layout).
- Question: Are any of these solutions detectable if a competitor implemented the same solution?
- Rationale: This question helps filter out concepts that may be better suited for protection through means other than patents, such as trade secrets. If an invention is extremely difficult to detect within a product, it may be more beneficial for a company to keep that invention a secret rather than disclose it to the public through a patent filing. Conversely, if an invention is easily detectable in a product, a patent filing may be more sensible since it may be challenging to keep the invention a secret while selling the product.
By obtaining answers to the above questions, you can compile a preliminary list of concepts in the form of technical problems and their associated solutions that are worth further exploration for potential patent protection. For each concept, I would further investigate: (1) whether the relevant engineer is aware of anyone else who has implemented the same solution to ensure the concept is indeed “new,” and (2) the importance of the feature(s) enabled by the concept to the end customer to aid prioritization of the concepts for potential patent protection.
With the information gathered through these questions, a patent practitioner can focus their efforts on fleshing out the details of the highest-value concepts in a patent application. Accordingly, I would encourage anyone seeking patent protection to reflect on these questions as a starting point for identifying the key concepts that should be included in a patent application before reaching out to a patent practitioner.