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. The material in this column is adapted from his book, “Invention Analysis and Claiming: A Patent Lawyer’s Guide,” (American Bar Association, 2007). Ron can be reached at 212-246-4546 and firstname.lastname@example.org.
Having drafted the claims for an application, we need to review them at both an overall claim suite level and an individual claim level.
At the overall claim suite level, we need to assure ourselves that we have appropriate backup positions in case the broadest claims are later declared unpatentable or invalid. That aspect of the review is the subject of this month's column.
Also at the overall claim suite level, we need to assure ourselves that we have claimed the invention in a way that will maximize the issued patent's value to the patent owner. Having claims in the appropriate claim settings2 is an example. We'll look at that aspect of the claim review in the column next month.
And at the individual claim level we need to verify that each individual claim fulfills the function that was intended for it. For example, we have to be sure that none of the limitations of a given claim take the claim out of the intended claim setting (by, for example, affirmatively reciting the generation of an input signal). We'll look at that in the column after next.
Fallback Feature Claims3
A fallback feature claim is a claim, typically in dependent form, reciting feature(s) of ...