Invention Analysis and Claiming: A Patent Lawyer's Guide / Edition 1

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2007 Paperback Good Item may show signs of shelf wear. Pages may include limited notes and highlighting. Includes supplemental or companion materials if applicable. Access ... codes may or may not work. Connecting readers since 1972. Customer service is our top priority. Read more Show Less

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Invention Analysis and Claiming presents a comprehensive approach to analyzing inventions and capturing them in a sophisticated set of patent claims. A central theme is the importance of using the problem-solution paradigm to identify the "inventive concept" before the claim-drafting begins. The book's teachings are grounded in "old school" principles of patent practice that, before now, have been learned only on the job from supervisors and mentors.

No dry reference tome, Invention Analysis and Claiming is accessible, making its points in the context of everyday inventions like the ball point pen and the paper clip. The text is engaging and its teachings made memorable by imaginative metaphors and succinct prescriptions for practice. Readers are also shown how the notions of problem, solution and inventive concept can serve as a framework for writing the specification and, later, for amending the claims. And those new to patent practice will be particularly helped by the inventor interview technique called Self-Directed Learning.

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Product Details

  • ISBN-13: 9781590318188
  • Publisher: American Bar Association
  • Publication date: 3/25/2008
  • Edition description: Older Edition
  • Edition number: 1
  • Pages: 283
  • Product dimensions: 7.13 (w) x 10.13 (h) x 0.62 (d)

Meet the Author

Ronald D. Slusky has been a patent professional for thirty five years in New York City.
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Table of Contents

Acknowledgments     xvii
About the Author     xix
Introduction     xxi
Identifying the Invention
Introduction     3
Inventions Are Concepts     5
Begin from the Problem (Not the Embodiment)     11
The Problem-Solution Statement     19
The Problem-Solution Statement-Reaching for Breadth     29
The Problem-Solution Statement-Reining in Overbreadth     45
Fallback Features and the Planned Retreat     53
Drafting Individual Claims
Introduction     67
Problem-Solution-Based Independent Claims     69
Inventive-Departure-Based Independent Claims     79
Intermediate- and Narrow-Scope Claims     103
Definition Claims     115
Assembling the Dependent Claims     123
The Claim Suite and the Anticipated Enforcement Scenario
Introduction     141
Invention Settings and Direct Infringers     143
Statutory Claim Types     165
Claim Diversity     173
Claim Review with Enforcement in Mind     185
Preparing and Prosecuting the Patent Application
Introduction     191
Writing the Background and Summary     193
Writing the Detailed Description     209
Claim Rejections-Amend or Argue?     219
Claim Amendments     227
Working with the Inventor     235
Inventive Concepts and Their Problem-Solution Statements     249
An Exercise for the Reader-and the Author     259
Sample Patent     265
Selected Statutes and Regulations     269
Glossary     277
Index     281
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  • Anonymous

    Posted March 2, 2008

    A Wonderful 'Mentor'

    As a newer patent agent looking for guidance in writing a high quality patent application, I have found this book to be a wonderful ¿mentor¿ in teaching me how to take a logical approach to writing the application. The book provides extremely useful guidance on how to approach the writing of an application from the patent drafter¿s first encounter with the invention through the submission of the application. Ron¿s theme of focusing in on the core inventive concept at each step of the drafting process has been very useful in reminding me to pay attention to the forest while I¿m in the trees. Additionally, I have found helpful his emphasis on stepping into a potential patent infringer¿s shoes in order to try to spot weaknesses in the application BEFORE submission. In addition to reading the book, I have also had the privilege of learning from Ron personally. This book is a lucid and enjoyable extension of his personal teachings. I highly recommend this practical guide to anyone who wants to advance their patent prosecution skills.

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