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Invention Claiming & Analysis:

Inventive-Departure-Based Claiming - An Exercise1

By Ronald D. Slusky

A powerful claim-drafting technique used by many practitioners is one that I call "inventive-departure-based" claiming. The technique is described in detail in a pair of prior columns.2

In summary, we begin by writing down a structural element or functional characterization that we have determined will serve to distinguish the invention from the known and obvious prior art in the final claim. Many claim-drafters, including the author, like to call this distinguishing limitation the "inventive departure." Other equivalent terms are "inventive step," "inventive advance," "point of novelty" or "the improvement." The author is also fond of "the hook for patentability."

Having written down the inventive departure, one builds a claim around it.

The inventive departure language usually winds up at the end of the claim, resulting in a claim that is essentially a so-called Jepson- or European-style claim, albeit without the transitional phrase "characterized in that" or "the improvement comprising" that is the hallmark of those claim structures.

The power in this technique is that goes a long way toward helping...

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