By Ronald Slusky
Can We Read the Claims, Please?1
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 book, “Invention Analysis and Claiming: A Patent Lawyer’s Guide” (American Bar Association, 2d Ed. 2012). Ron’s CLE-accredited two-day seminar based on the teachings in his book is being presented this on October 22-23 in Los Angeles and October 25-26 in San Diego. Details at www.sluskyseminars.com Ron can be reached at 212-246-4546 and firstname.lastname@example.org.
As I observed last month, “wherein” is one of those words that claim drafters have gotten so used using to that we skim over it in the reviewing process. It fits a familiar pattern and may “sound right” even though it may not effectively serve the function we intended for it.
In particular, a recitation introduced with “wherein” may not actually limit the claimed subject matter, depending on its syntax and its relationship to the other limitations. And if that is so, the claim is going to be invalid if the “wherein” recitation contains those limitations we are ...