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 2007 book “Invention Analysis and Claiming: A Patent Lawyer’s Guide.” Ron’s two–day seminar based on the book will be given in New York on February 8-9, 2010. See www.sluskyseminars.com. Ron can be reached at 212-246-4546 and email@example.com.
Last month's column presented some ideas for structuring the Detailed Description in a way that highlights the invention. This month's column continues that discussion.
Use the Word "Invention" Carefully
The word "invention" should be used with great care. This is a point that cannot be emphasized often enough or strongly enough. The word "invention" should be used in an unqualified way only when referring to the broad inventive concept. We should not call something "the invention" unless we are willing to have the patent coverage limited to that.
If the specification says that something is "the invention," the Opposing Team will argue to the Court that it is the invention, regardless of what the claims say, and various reported decisions 2 will back them up. Broad terms in the claims have been interpreted narrowly because the specification characterized something as being a part of "the invention." Indeed, entire claim elements nowhere to be found in a claim have been imported into it based on such a characterization of "the invention" in the specification.
Consider, for example, the seemingly innocuous statement
FIG. 1 is a circuit diagram of the invention.
This sentence implies that every component shown in the circuit diagram is required to implement the inventor's contribut...