Inventive-Departure-Based Claim Drafting—Part II
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Invention Analysis and Claiming:
Inventive-Departure-Based Claim Drafting—Part II1

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” (American Bar Association 2007). Ron will be conducting a two-day seminar this fall based on his book. Visit He can be reached at 212-246-4546 and


Last month’s column described a claim drafting approach called inventive- departure-based claiming.  One begins by writing down the so-called inventive departure2—a physical element, method step, functionality, or a combination of these that defines how the invention departs from the prior art. We then proceed backwards from the inventive departure, adding only so much additional language as is necessary to do one of two things:

1) Provide antecedent support for the language used to express the inventive departure;

2) Put the inventive departure into a particular context in which the claimed subject matter is novel and non-obvious. 

Working backwards from the inventive departure helps ensure that only essential limitations ...

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