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 all online booksellers including ababooks.org. Ron can be reached at 212-246-4546 and firstname.lastname@example.org.
Prior columns offered some invention analysis paradigms useful in the quest for the broad invention—a quest that the author calls “reaching for breadth.” This is the first of two columns that look at the other side of the coin—analyzing an invention definition to see if it is too broad and, if it is, how best to narrow it into the patentable realm.
The context for our prior discussions was a problem-solution statement, which the author recommends as a pre-cursor to any serious claim-drafting. But recognizing that many practitioners would rather draft claims in the first instance, these two columns address overbreadth in the context of recognizing/fixing overbreadth of a claim. However...