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Invention Analysis and Claiming:
Reaching for Breadth Part VI



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 presents a CLE-accredited one- and two-day seminar based on his book both in public venues and in-house. Details at www.sluskyseminars.com Ron can be reached at 212-246-4546 and rdslusky@verizon.net.

Take on the Mindset of the Opposing Team

Among the most potent of those approaches has been discussed numerous times in this space, 2 but it is so important as to bear repeating yet once again. It is the idea of keeping in the forefront of our consciousness how the potential infringer and his clever patent attorney—the "Opposing Team"—might try to avoid liability under the claims that we are drafting.

Taking on an Opposing Team mindset enables us to see the warts on our claims in a way that simply reviewing the claims in view of our own disclosure does not. One should ask oneself: What would I do/build/argue to get around this claim if I were a commercial competitor or his shrewd lawyer. For example, is there a way to argue that the claim is invalid as being too broad or indefinite? What infringement loopholes can be exploited that might enable the motivated competitor to read the specification and extract commercial value from its teachings while skirting the boundaries of whatever has been claimed? How easy would it be for one or more of the steps of a claimed method to be practiced in Mexico or Canada, even though the bulk of the method is perform in the U.S.?

The patent practitioner endeavoring to further his client's interests is aided in that task by taking on the mindset of a competitor's attorney endeavoring to furt...

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