Invention Analysis and Claiming: A Patent Lawyer’s Guide

By in Intellectual Property on February 24, 2013

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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.

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.

2 thoughts on “Invention Analysis and Claiming: A Patent Lawyer’s Guide

  1. 1
    21 of 21 people found the following review helpful
    5.0 out of 5 stars
    Patent Powerhouse!, February 29, 2008
    Samuel Gompers

    I’m a newly minted patent associate. I’ve seen other massive tomes around on drafting basics. I’m aware that the bosses rarely have time to initiate a tutorial for the associates. So, what’s the solution? I just happened to read an ABA pitch for Slusky’s book and picked it up. What a book it is!

    It’s not easy to take complex subject matter and distill it down into its key components while being educational and keeping the pace light, but dare I say as a novice patent attorney, that Slusky seems to have accomplished just that. I don’t know the man, but I couldn’t help but think as I read this book that he was standing over my shoulder at my desk, shepherding me along.

    It’s so clear to me: read with a goal–begin with the problem/solution and keep it in your head throughout your drafting. Slusky’s mantra has made it seem so much easier. And isn’t that the mark of a good teacher after all, substituting mastery for mystery?

    Some people don’t learn by reading, but by doing. Fair enough, but this book, unlike its more massive brethren in the field, packs more useable knowledge per page and in an enjoyable style to read, than the others ever could.

    Thanks. I feel ready to tackle the most challenging of patent apps!

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  2. 2
    15 of 15 people found the following review helpful
    5.0 out of 5 stars
    Absolutely Essential, February 27, 2008
    Mike B. Regitz (Fulbright & Jaworski L.L.P., Dallas, TX USA) –

    The first thing that needs to happen whenever any patent attorney/agent starts in the IP section of our law firm is to require them to sit in their office and read this book cover-to-cover. Any billable hours lost in this endeavor will be replaced with an exponential increase in the quality of patent applications that the person will be able to prepare going forward. Every chapter brings a new revelation about how an invention should be claimed and, perhaps more importantly, should not be claimed. Slusky’s book makes clear what the objective of a patent attorney/agent should be with respect to patent protection, which is not so obvious when attorneys/agents receive their training on the job. I only wish that I had read this book prior to preparing a single patent application.

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