Invention Analysis and Claiming:
Reviewing the Claims Part 1¹

By Ronald Slusky

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 ...