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 firstname.lastname@example.org.
There are two main schools of thought about the patent specification’s Summary of the Invention.
Many attorneys believe in the “claim-restatement” type of Summary. This is a substantially verbatim reprise of the broadest, and perhaps other, claims, with only minor changes, such as changing “said” to “the.” Others use the “story- telling” type of Summary, which presents the invention in narrative form, thereby continuing the problem-solution story that was begun in the Background.
The author is in the latter school, as this column explains.
The Effective Specification
Let’s first talk about the specification as a whole.
An effective patent specification speaks to an audience extending far beyond the person skilled in the art. Indeed, ...