Invention Analysis and Claiming: A Patent Lawyer's Guide, Second Edition

by Ronald D. Slusky

Overview

Invention Analysis and Claiming: A Patent Lawyer's Guide, Second Edition, 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. In addition, a new chapter is devoted to means-plus-function claiming—explaining its history, how the Federal Circuit case law has dramatically affected the practice in this realm, and how the patent practitioner can secure appropriately broad coverage for the inventive concept while not triggering "means-plus-function treatment."

Questions at the end of each chapter have been added to:

• Confirm the understanding of the principles presented;
• Explore the jurisprudential and practical implications of those principles; and
• Try out the invention analysis and claim drafting skills taught in the chapter

For additional information regarding the topic please visit Ronald Slusky's Invention Analysis and Claiming Seminar for events near you.

Product Details

ISBN-13:	9781614385615
Publisher:	American Bar Association
Publication date:	10/07/2013
Edition description:	Second Edition
Pages:	375
Product dimensions:	7.00(w) x 9.90(h) x 0.90(d)

About the Author

Ronald D. Slusky has been a patent professional for thirty five years and is currently in private practice in New York City. For thirteen of his thirty years at Bell Labs, he was in patent management, supervising and mentoring small and large groups of patent attorneys. Mr. Slusky is the author of several instructional booklets and is the co-author of a chapter in Advances in Image Pickup Density (Academic Press, 1981). He has a B.S. and an M.S. in electrical engineering from Columbia University, a J.D. from Seton Hall Universityand is admitted to practice in New Jersey and the U.S. Patent and Trademark Office.

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
Appendices
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