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Invention Analysis and Claiming:
Structuring Claims to Avoid Multiple Parties1

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 Dallas on October 25-26 and New Brunswick, NJ on November 15-16.  For details, including CLE credit information, see Ron can be reached at 212-246-4546 and

Consider the invention depicted in FIG. 1. A user selects an icon displayed on a web page. Information identifying the selected icon is transmitted from the user's PC to a web server which, in turn, carries out some new and non-obvious steps in order to provide some new and non-obvious functionality.

Inventions like this virtually beg to be claimed as a multi-party method. After all, how can the web server do its thing unless and until the user has done her thing? Claim 1 was drafted with this thought in mind, reciting a method in which the computer user performs steps a and b and the web server performs steps c and d:

1. A method comprising

(a) selecting an icon displayed on a screen,

(b) transmitting to a web server a signal indicative of the selected icon,

(c) receiving the signal at the web server,

(d) processing the received signal in such a way that ....

Unfortunately, a claim like claim 1 is pretty much infringement-proof because there is no direct infringer. The user and the web server do carry out all the claim steps between them, and multiple parties can constitute a single direct infringer. However, to be such...

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