By Ronald Slusky
Ronald 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 email@example.com
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...