Is a patent attorney specifically trained to find all possible alternatives to a utility invention that would successfully achieve the same functions and thus bypassing the patent?
In practice, how does a patent attorney assigned to a utility application go about figuring this stage of the process?
In theory, how is this process of discovering all possible invent-arounds, in order to cover them in the application, done? It seems impossible.
asked Aug 17, 2022 at 23:44
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Finding and filing on all possible solutions to a problem is impossible. Some inventors with deep pockets hire a team of patent-law knowledgeable product designers or appropriate engineers to do just that. Also the attorney helps by broad language and focusing some claims on the part of the "invention" that are at the core.– George White ♦Aug 18, 2022 at 1:16
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1 Answer
In my experience, the patent attorney doesn't do this at all. The attorney relies on the inventor to provide ways to broaden the invention by asking for alternative implementations. Some inventors fall into the trap of focussing on the best implementation. The patent attorney can and should push the inventor to think as broadly as possible so as to capture all the possible implementations the inventor can conceive of. Careful questioning by the attorney can often reveal other implementations that were rejected because they didn't work as well as the best mode. These should be covered in the claims as well.
