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. This column is adapted from Ron’s widely praised book, “Invention Analysis and Claiming: A Patent Lawyer’s Guide,” (American Bar Association, 2007). Ron also offers a CLE-accredited two-day seminar based on the principles presented in his book. The upcoming seminar schedule will be posted early next year at www.sluskyseminars.com. Ron can be reached at 212-246-4546 and firstname.lastname@example.org.
This is the second of three columns presenting a methodological approach to reviewing the claims of a patent application prior to filing.
Every claim drafter is, of course, aware of the need to check the claims for proper antecedents and other formalities. The kind of review we are talking about here, though, is more substantive. The idea is to make sure that we not only have correct claims but also the right claims.
There is actually so much to consider that it is virtually impossible to do an effective review by simply reading down through the claims and looking for ways to "improve" them. We should, rather, take multiple passes through the claims and look for different things at each pass.
The various reviews are at two different levels.
One of these is review at overall claim suite level. Here we assure ourselves that, first of all, the overall claim suite effectively anticipates the possibility that our broadest claims may be declared unpatentable or invalid. To this end, the overall claim suite needs to a) include appropriate fallback feature claims; b) include one or more independent embodiment claims; c) have its claims optimally chained within claim families; and d) exhibit a significant level of claim diversity. We looked at those topics last month.