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Invention Analysis and Claiming: A Patent Lawyer's Guide Paperback – May 1, 2007

ISBN-13: 978-1590318188 ISBN-10: 1590318188

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Product Details

  • Paperback: 283 pages
  • Publisher: American Bar Association (May 2007)
  • Language: English
  • ISBN-10: 1590318188
  • ISBN-13: 978-1590318188
  • Product Dimensions: 7.1 x 0.7 x 10.1 inches
  • Shipping Weight: 1.2 pounds
  • Average Customer Review: 4.7 out of 5 stars  See all reviews (21 customer reviews)
  • Amazon Best Sellers Rank: #886,902 in Books (See Top 100 in Books)

Editorial Reviews

Review

Invention Analysis and Claiming is highly effective because the author challenges the reader to the notion of invention and precisely illustrates the correlation between distilling the invention down to its fundamental inventive concept and effective patent claim drafting.

Lucas I. Silva, Journal of High Technlogy Law, Suffolk University School of Law -- Journal

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 lawyers.

More About the Author

Ronald D. Slusky is a patent attorney in solo practice in New York City.

Ron learned the patent craft at Bell Labs, originally a unit of AT&T and later of Lucent Technologies, from which he retired in 2001 and then opened his private practice. He also served briefly as interim patent counsel for NEC Laboratories America in Princeton, New Jersey.

In his 31-year career at Bell Labs, Ron had the opportunity to mentor dozens of patent attorneys both as a direct mentor and for 13 years as a managing attorney supporting lawyers responsible for patenting inventions in the areas of information sciences, computer systems, modems and telecommunications. One of the most satisfying aspects of his career has been to mentor other attorneys in the "old school" skills that he learned from his mentors at Bell Labs and which he has incorporated into his book, Invention Analysis and Claiming: A Patent Lawyer's Guide (2007) published by the American Bar Association. His monthly column, Invention Analysis and Claiming, appears in Intellectual Property Today.

Ron also conducts a 2-day, CLE-approved seminar based on the principles laid out in his book. The seminar website is www.sluskyseminars.com

Ron holds B.S. and M.S. degrees in electrical engineering from Columbia University and a JD, cum laude, from Seton Hall University. He is admitted to practice in New Jersey, the U.S. Patent and Trademark Office, and the Court of Appeals for the Federal Circuit.

Customer Reviews

4.7 out of 5 stars
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See all 21 customer reviews
The book is very well written and very clear, and the examples are thoughtfully chosen.
Jason Paul DeMont
I would recommend this book to anyone who wants to learn about the patenting process be it a solo inventor or a novice patent practitioner.
ilib
It provides a practical and straightforward method of analyzing the invention and drafting claims.
Do-It-Herself

Most Helpful Customer Reviews

21 of 21 people found the following review helpful By Samuel Gompers on February 29, 2008
Format: Paperback
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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15 of 15 people found the following review helpful By Mike B. Regitz on February 27, 2008
Format: Paperback
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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14 of 14 people found the following review helpful By Jason Paul DeMont on February 28, 2008
Format: Paperback
I strongly recommend this book to anyone who wants to learn to draft valuable, enforceable patent claims. The book is very well written and very clear, and the examples are thoughtfully chosen. I learned much of what I know about elevating patent prosecution to an art form from the author, and this book contains his expert insights. I have personally benefited from this book and intend to buy it for each of my associates.
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7 of 7 people found the following review helpful By James L. Saikin on March 8, 2009
Format: Paperback
As a guide for claims drafting it is superb, while I think Landis on the Mechanics of Claim Drafting is an excellent text on the subject for Lawyers, Ronald Slusky's book is outstandingly well written for the beginner and even the novice. He describes in great detail the steps he takes in addressing the problem/solution analysis and then demonstrates various methods that he has found helpful in drafting the broadest independent claim. I like his treatment of fall back positions for overcoming a potential failure of the broadest claim. Sometimes even the skilled forget that their first broad claim while best for their client may not pass muster under the examiner's review. So the retreat and rewrite a less broad claim is quite appropriate. Then Ronald suggests how your analysis might be utilized to defend the claims in an office action and a potential response. Mr. Slusky does not try to write every potential claim form for you but gives helpful definitive suggestions for drafting winning claims. Excellent text. It should be on every Patent Attorney's desk or on the bookshelf of every Patent Agent.
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4 of 4 people found the following review helpful By A. Flum on June 17, 2010
Format: Paperback Verified Purchase
If it were possible, I would give this book more than five stars. This book is absolutely essential for every new patent practitioner and very beneficial for experienced practitioners. Ron Slusky has a rare gift of distilling down this complex subject into accessible and essential concepts that can be immediately applied. The book is very easy to read and written from the point of a very experienced and talented mentor. It is filled with many clear examples to illustrate each important topic. As a result of reading the book, you will learn how identify your client's essential inventive concept and to construct an enforceable claims suite with both strategic and deliberate intent. Out of all of the books in my patent practice reference library, which include excellent references such as Faber/Landis, Sheldon, and Donner, this one is of most value and use for me. It has significantly changed my practice for the better.
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4 of 4 people found the following review helpful By Kirk Teska on February 27, 2008
Format: Paperback
I read this book and immediatly manadated that all of my attorneys read it as well. I also recommended it as essential reading for my law school students. Ron may call himself "old school" but in my opinion his way of thinking about patent claims is the only correct way. I've employed and taught Ron's claim drafting strategies for many years and although I might hate to admit it, I learned a lot from this book.

I wish I had this book when I was first starting out 17 years ago. Instead, I read the claim construction decisions and learned on the job. Claim drafting really is an art form and Ron's book gives you the framework necessary to begin crafting patent claims with a purpose.

I was thinking about writing a text book about how to draft patent applications, but now I'm not so sure I could add much to what Ron has written.

Kirk Teska, author of Patent Savvy for Managers: Spot & Protect Valuable Innovations in Your Company
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