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Invention Analysis and Claiming:
First Be a Skeptic, Then Be an Advocate1

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 CLE-accredited one- and two-day seminars based on his book both in public venues and in-house. Details at Ron can be reached at 212-246-4546 and

In a previous column,2 I warned against being misled by an inventor’s embodiment focus. The broad invention is often some new functionality. How the embodiment implements that functionality is of secondary importance. The inventor may not appreciate that distinction, however, and may lead the practitioner to assume that the new functionality is already known in the art. The opportunity to define the inventor's contribution at its full breadth may then become lost.

The opposite is also possible, however. That is, the inventor’s view of the breadth of her invention may be overly optimistic. 3

A truism of the patent business is that if a problem is one of long standing and could have been solved years ago, it probably was! Thus when presented with an invention that solves an old problem that was readily solvable with old technology we should bring a healthy dose of skepticism to the invention analysis process.

Consider, for example, a pager or a cell phone that automatically switches from audible ringing to its vibrate mode when an on-board microphone senses that the ambient noise level is so high—on a busy street, for example—that the audible ringing might not be heard. It’s a cute idea. But the problem of n...

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