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 offers a CLE-accredited two-day seminar based on the principles presented in his book, both in public venues and in-house. Details at www.sluskyseminars.com Ron can be reached at 212-246-4546 and firstname.lastname@example.org.
Last month's column pointed out the limitations of using the traditional classroom- style model when learning about the invention from the inventor. As we saw, making the open-ended request, "Tell me about your invention," and then settling in to a classroom-style learning session and taking down whatever she thinks to say, runs the risk of receiving the wrong type of information, or receiving too much information or receiving it in a less-than-optimum order.
Much more effective for patent work is the information-gathering approach that I call "self-directed learning." Here, the patent attorney or agent teaches himself what he needs to learn using the inventor as a resource. The attorney takes charge of the conversation rather than being the passive, classroom-style recipient of whatever the inventor thinks is most useful for the attorney to know. The attorney controls the quantity of technological information delivered by the inventor, as well as the order and speed of its delivery. Information is thereby received from the inventor at a level of detail, in an order, and at a pace, that most efficiently provides the attorney with what he needs to know.
The columns for this month and next present some specific inventor interview approaches can be used when implementing the self-directed learning paradigm.
Begin From a Known Starting Place