By Ronald SluskyRonald Slusky mentored dozens of attorneys in “old school” invention analysis
and claiming principles over a 31-year career at Bell Laboratories. He is now in private practice in New
York City. This article is adapted from his book “Invention Analysis and Claiming: A
Patent Lawyer’s Guide” published by the American Bar Association and
available at ababooks.org. Ron can be reached at 212-246-4546 and
rdslusky@verizon.net
True or false? A patent claim should capture the inventor's contribution to the art.
The answer would certainly seem to be "true,” but it is not the complete
answer. The value of a patent is not determined by how cleverly or well its claims define the
product or method that the inventor designed. A patent is valuable when its claims read on what
somebody else will market or, at least, would market but for the existence of
the patent. If it is expected that competitors will slavishly “knock off” a copy of the
inventor’s marketed product, there is no real issue—almost any claim will do. But
that rarely happens. More often a competitor implementing the essence of the inventor’s
teachings does so in a way that departs significantly from the inventor’s design.
Thus when we are drafting our claims—particularly what we regard to be the
broadest claims—the appropriate mindset is not one of defining what our inventor has
don...
