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Invention Analysis and Claiming:
Invention Settings1

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.  Ron’s widely praised two–day seminar based on his book, “Invention Analysis and Claiming: A Patent Lawyer’s Guide, (American Bar Association, 2007), will be presented in several venues this fall.  For details see Ron can be reached at 212-246-4546 and

A patent owner may not realize the full value of his patent unless the invention is claimed in all of its commercially significant settings.

An invention setting is an environment or context in which the inventive concept is manifest, 2 and is "commercially significant" when it is expected that competitors will implement the invention in that particular setting. We will see below how a cylinder lock invention can be manifest in at least five different commercially significant settings.

The discussion here characterizes a patent's value principally in terms of potential license royalties or monetary damages. But the discussion applies with equal force when a patent is to be cross- licensed or when the patent owner intends to exercise his right of exclusivity. In any of these cases, the patent owner's goals may be less than fully realized if the claims define the invention in less than all of its commercially significant settings.

Invention Settings Explained

Consider the cylinder lock of FIG. 1.

As in cylinder locks generally, the cylinder plug of this lock can rotate within the cylinder shell only if the key raises the top of each tumbler to the shear line. Doing that in this part...

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