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 bookstores. More information about the book can be found at www.claim- drafting.com. Ron can be reached at 212-246-4546 and rdslusky@verizon.net
A patent application should be filed not only with claims defining the invention at its broadest, but with claims of intermediate and narrow scope as well. A claim of intermediate scope includes perhaps one, two or three limitations not required to define the broad invention. A claim of narrow scope includes even more.
Intermediate- and narrow-scope claims serve a number of functions. Most importantly, they implement a Planned Retreat for the invention so that if prior art makes it necessary to retreat from the application’s broadest claims, those that remain will have given up as little valuable intellectual property as possible while providing a defensible position for what's left.
Perhaps the most familiar type of...
