Invention Analysis and Claiming:
Reviewing the Claims -- Part III¹

By Ronald Slusky

This is the third of three columns devoted to a methodological approach to reviewing the claims of a patent application prior to filing.

We saw previously² that a review at the overall claim suite level, allows us to assure ourselves that the claims as a whole anticipate the possibility that our broadest claims may be declared unpatentable or invalid. We do this by, for example, confirming that we have claims of varying scope and claims that define the invention in diverse ways. We should also assure ourselves that the overall claim suite maximizes the value of the issued patent to the patent owner by defining the invention a) in all of its commercially significant settings, b) using all appropriate statutory claim types, and c) in a way that captures the maximum royalty base.

The subject this month is review at the individual claim level. Checking for antecedents and other formalities is a given. But, substantively, we need to make sure that each individual claim effectively carries out the function that was intended for it. Presented herein are some of the more significant issues in each of several categories.

UNDULY NARROWING LIMITATIONS

We intend a given claim to define the invention at a certain level of breadth. We need to make sure that the words we have used do not narrow th...