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Invention Analysis and Claiming:
Writing the Application with the Inventor1



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’s CLE-accredited two-day seminar based on the principles presented in his book will be held this month in New York (May 12-13), Chicago (May 16-17) and Santa Clara (May 19-20).. Details at www.sluskyseminars.com. Ron can be reached at 212-246-4546 and rdslusky@verizon.net.

For many practitioners, one face-to-face meeting with the inventor is all that the parameters of their practice allows. However, inventor involvement in preparing patent applications extends over a wide range—from virtually no involvement all the way up to joining the attorney at the keyboard and the two of them writing the entire application together, even the claims. Many factors determine the degree of inventor involvement: the extent to which the attorney is interested in and capable of involving the inventor in the writing process; the inventor's interest in doing so; other demands on the inventor's time; and how close their offices are to one another.

All this having been said, the greater the inventor involvement in preparing the application, the better the application. It will certainly be more efficient for the attorney, and often for the inventor as well.

Having blocks of time set aside to work with the inventor allows the attorney to work in a more concentrated fashion than if working alone, subject to interruptions from phone calls and e-mail. The application's logical structure and terminology stay fresh in the attorney's mind. As a result, the writing process requires fewer total hours than when the application is worked on for shorter periods of time that may stretch out over many weeks or months because the attorney knows where he is and he knows the t...

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