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If an inventive step solves several problems outlined in the background, should you list each problem as an "object of the invention" separately and if so, do you need to address each solution separately when writing the detailed description of the drawings/embodiments?

i.e. A new type of shower head solves ease of use for a user of "ordinary skill in the art", water-flow consistency, ease of installation for a user "skilled in the art".

Furthermore, does the use of fuzzy terms such as "ease of use" require further definition as to how the "use is easier" within the detailed description of the embodiments? If so, should you breakdown the elements of "ease of use" as further objects before the description? Finally, in the detailed description can you solve "ease of use" collectively in one sentence or do you need to correlate with each object of the invention separately and distinctively?

I'm concerned that it's important to structure my objects in the same structure as the explanation of the drawings and in the same structure as my claims, yet the inventive step as part of my independant claim solves multiple objects at once so perhaps I should broaden it with dependants.

Thanks as always

  • This is a good question and one of the reasons it is better to work with an experienced patent attorney when writing a patent. I'll be interested in what answers this elicits. – Eric Shain Mar 31 '17 at 23:15
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So I will present one approach. But I should caution that this is not the approach, and others may quite reasonably differ.

If an inventive step solves several problems outlined in the background, should you list each problem as an "object of the invention" separately and if so, do you need to address each solution separately when writing the detailed description of the drawings/embodiments?

No. Indeed, there is a risk to listing any objects at all, as they are essentially a guarantee that your invention achieves the object.

As an consequence of this, US-style drafting has conventionally moved away from including any discussion of benefits. But, in my view that swings the needle far too far in the opposite direction: including some limited commentary about benefits is useful to support non-obviousness/inventive step.

One quite useful way to structure a discussion of the benefits can be found in traditional British-style drafting, which uses the summary section. In the summary section, there is a copy of each claim, along with some description about the benefits inherent to that claim.

For example (and in unpolished terms):

In a first aspect, there is provided a shower head comprising features A, B, and C. Such a shower head may be easier to use, … because. Additionally or alternatively, such a shower head provides better water-flow consistency, because ….

In some embodiments, the shower head comprises a connector D. This may allow for easier installation because ….

Then in the detailed description, you focus solely on how the device works: there is no need to repeat the benefits, since they've already been set out.

But solving multiple problems raises a flag

That said, if your device solves multiple problems, then it may be an indication that you actually have multiple inventions which could each be claimed separately. That is, if the ease-of-use is due to feature B, and the improved consistency is due to feature C, and both are at least arguably novel and non-obvious, then you could well have a separate independent claim directed to each of these. This would broaden your protection.

Of course, if the features cannot be so easily divided (since both solutions are dependent on having features B and C together), then a single independent claim may be quite reasonable.

Does the use of fuzzy terms such as "ease of use" require further definition as to how the "use is easier" within the detailed description of the embodiments? If so, should you breakdown the elements of "ease of use" as further objects before the description?

The standard you must meet is that the person having ordinary skill in the art (or, in reality, the examiner or another disinterested reader) would understand what you mean. There is no hard rule for this, and you must essentially use your intuition. If you believe the skilled person would understand "ease of use" in the manner you intend without any further explanation, then there is no need to explain. However, if you believe the skilled person might find it a bit unclear on its own, then explain a little what you mean. It may be that you can break it down into separate benefits (which does not hurt to include). In general, if you're unsure, more explanation is better, since you can't add it later.

  • Thank you - I am in fact pursuing my patent initially with the UK IPO so your answer is particularly helpful. I considered my invention "inventive" when I first pursued this patent for one reason but upon drafting, searching and thinking outside the box I've discovered that I have potentially two inventive steps and a method (optional but reinforcing). I was having a headache trying to structure them into an independent claim without narrowing it too much, so was looking to put one into a dependant. It seems now I have two independents and embodiments that can be dependant to each. – Lochnivar Apr 1 '17 at 0:25
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    @Lochnivar Sounds like you're well on the right track then! As an aside, if you weren't aware, you might want to bear in mind that the UKIPO is pretty strict on multiple independent claims, so you might get a lack of unity objection during examination. This shouldn't stop you from aiming for the broadest protection with multiple independent claims, but it may just mean paying a bit more fees. – Maca Apr 1 '17 at 2:25
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    @Lochnivar In Europe there is often a section at the beginning saying the prior art has the problems a b c d e f g and this invention aims at improving the prior art. Sometimes it says improving the prior art in at least one of those. That way you do have a part saying what you improve without actually saying what it is exactly. You could put in easier to use, cheaper, etc. And as long as you solve one of those your okay. Put in everything you can think of and make it fuzzy. – DonQuiKong Apr 1 '17 at 7:35
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    Hi Don, thank you for this. I'm trying to avoid using the word "prior art" but have picked a number of examples that could be seen as such just to have defense against any that the examiner might cite. I'm trying to be careful to talk only about inadequacies in resolving the outlined problem(s) and not the functions they provide - tricky trying to avoid an "admission". I've read "less is more" sometimes and have deleted quite a few references to avoid linking the invention to what I've never considered prior art. Seem's like a fine balancing act.... – Lochnivar Apr 1 '17 at 19:11
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Dependent claims are narrowing in that they incorporate the limitations of the independent claim. I haven’t filed for patent protection for some time now, but the objects are for clear disclosure and not really necessary provided that the specification as a whole has adequate disclosure of the invention and to support the claims.

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    I'm not sure this answer gets at the meat of the question which is how to structure the specification and claims when there are separate objects solved by the invention. If anything this means separate independent claims. – Eric Shain Mar 31 '17 at 23:14

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