Invention Analysis and Claiming, a Patent Lawyer’s Guide

This book was written by a patent attorney in private practice who had previously worked for over 30 years as a patent attorney in-house at Bell Laboratories (AT&T and then Lucent).

The book tackles the problem of abstracting the inventive concept from a technology and claiming it as widely as possible, with minimal limitations. It is not a guide to passing the US Patent Bar, but is rather aimed at practicing attorneys wishing to hone their skills.

There is a good analysis of the pros and cons of means-plus-function claiming as a pose to claiming structural components. The book demonstrates how claims can be tightened, and how to avoid unnecessary limitations like descriptive labels in claims, modifiers, unnecessary elements that are part of an embodiment but not part of the invention, advantages and uses – i.e. material that belongs in the description and perhaps has a place in dependent claims.

The need for the claims to define the invention, not to explain it is stressed, and why words such as for… are best avoided in claims. One valuable point is that the author stresses the need to claim proactively not reactively. In other words, not to draft claims that examiners are comfortable with, but rather those that best serve the interests of the applicant.

Like any book of this nature, it is easy to pick holes and to find its limitations. Most examples are related to simple mechanical inventions and the tools provided may be somewhat limited for claiming biotechnology and chemistry type inventions, particularly gene sequences and the like. Also, it is focused on US practice, and increasingly, practitioners are required to consider all jurisdictions when drafting claims.

Although focused on claim drafting, there are further sections that relate to the background, summary and descriptions as well. I think the work is valuable for experienced practitioners, since all too often, patent attorneys get into a drafting style that blinkers their perspective of alternative ways to do things, and may not reconsider the theory after obtaining their licenses. Furthermore, to get licensed, one tends to be conservative in claim drafting, which is not necessarily to the client’s advantage.

The book is a mere 284 pages long and is very well written. I read it over a couple of days. More to the point, I gave it to a trainee, and she read it over a week and found it useful.

Invention Analysis and Claiming a Patent Lawyer’s Guide, by Ronald Slusky American Bar Association 2007;  ISBN 978-1-59031-818-8. Price $79.95.

Categories: book review, Patents

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