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Invention Analysis and Claiming:
What's This Claim Doing Here?

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. Ron presents CLE-accredited one- and two-day seminars—both in public venues and in-house— based on his book “Invention Analysis and Claiming: A Patent Lawyer’s Guide, (American Bar Association, 2007).  Details at Ron can be reached at 212-246-4546 and

Every claim in a patent should have some reason for being there. However, many patent applications are filed with one or more claims serving no worthwhile function.

Not that there’s any particular harm if a patent issues with some claims that provide no value-added. But we should be maximizing the value of the issued patent by making optimal use of the three independent and twenty total claims that come for “free.” It is the rare invention for which 3-and-20 worthwhile claims cannot be drafted, leaving no room for claims that the patent would be just as well off without. Even if the client is willing to pay excess claims fees, at least some of that money is wasted if the application includes claims that have no particular reason to be there.

The different independent claims in most issued patents typically do provide value added. Notable among these are independent claims that articulate the inventive departure in different ways; 2 that define the invention in different settings; 3 that define the invention using different statutory claim types (e.g. method and apparatus); that focus on commercially-likely embodiments; 4 or that present the inve...

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