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 is 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.
Patent attorneys love to explain things. This is a valuable trait to have when writing a patent specification. But it can get in the way when drafting claims. It is hard to resist the urge to liven up a claim’s dull litany of elements by explaining that the claimed subject matter is an automobile floor mat; or an optical system with improved output efficiency; or a rotor applicable for use with a flywheel.
That urge to explain must be resisted nonetheless.
A claim’s function is to define the boundaries of the patent owner’s intellectual property, not to explain or help readers to understand something. An explanatory-type limitation may seem harmless enough, but...