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 www.sluskyseminars.com. Ron can be reached at 212-246-4546 and firstname.lastname@example.org.
The previous two columns described a claim drafting methodology called inventive- departure-based claiming. The basic idea is to start with some number of words that define how the invention departs from the prior art. We then work backward from there, adding to the claim only those limitations needed to either 1) provide antecedent support for the language used to express the inventive departure; or 2) put the inventive departure into a particular context in which the claimed subject matter is novel and non-obvious.
This column introduces the prescription Pack Only What You Need as a guiding principle when drafting a claim by working backwards from the inventive departure.
The prescription ...