By Ronald Slusky
Invention Analysis and Claiming
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 the Second Edition of Ron's book, "Invention Analysis and Claiming: A Patent Lawyer's Guide" (American Bar Association, 2012). Ron presents CLE-accredited one- and two-day seminars 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 firstname.lastname@example.org.
Given the pervasiveness of computer-implemented technology in virtually every corner of "science and the useful arts," the need to characterize elements of apparatus claims in functional terms is virtually inescapable. To do otherwise—i.e., to characterize an element in purely structural terms—carries with it the risk that the Opposing Team will find a way to design around the claim by doing what the recited physical element does in some other way.
Unfortunately, the doctrine of equiva...