By Ronald Slusky
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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.” The schedule for Ron’s two–day seminar based on the book can be found at www.sluskyseminars.com. Ron can be reached at 212-246-4546 and rdslusky@verizon.net.
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This is the second of two columns2 presenting invention analysis and claiming techniques that various colleagues have shared with the author. 3,
Articulate the Invention Concisely
One of my colleagues suggests that unless one can give a short-and-sweet answer to What is the Invention? more analysis is required.
One needs to be able to answer the question "What is the Invention?" without a lot of arm-waving and a half-hour diatribe. Otherwise, you have not grasped the essence of the invention. Once I can answer "What is the Invention?" I can then draw a boundary around those elements or functions—mechanical, electrical, or whatever—that allow the invention to overcome the problems unsolved by the prior art. I then try to distill the encircled elements into a single function by aggregating a number of more specific functions into a broader generic one.
Work Backwards from the Inventive Departure
An approach favored by one of the author's colleagues in drafting a broad claim to the invention is to work backwards from the inventive departure and try to "break" the claim as you go.
I focus on the departure or difference from the prior art that the invention contains and build a claim around that....
