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

Thank you, 5 star general on strategy and tactics in claiming drafting and patent English grammar fieldI am an inventor having invented a novel method resolving a 50 years’ problem in electronic circuit: how easily to generate a wave-pipelined circuit. Each wave-pipelined circuit has every advantage over traditional circuit of same logic in terms of power consumption, speed, area of silicon, but it has an almost insurmountable fatal disadvantage: only chip manufacturers, like Intel, IBM, SUMSUN, etc. have the rights to design such circuits. The reason is that to generate such circuits, you must have a means to know the exact timing through which two signals from any two sources within the circuit reach 2 pins of any OR/AND gates to make sure that none of first cycle signals are caught up with, or not contaminated, by any of second cycle signals. That leads the result: none of ordinary electronic engineers can design a wave-pipelined circuit in the last 50 years.I thought I have solved the problem by filing a provisional patent application to USPTO with a 65 page specification and 9 page drawing. One big company shows interest, but has not given any help in transforming the provisional patent application to a regular one. Finally I am forced to start claim drafting myself. Within 15 days, I had drawn more than 50 claims based on knowledge learned from “Patent it Yourself” and two IBM patents, because I know what my invent conceptions are thoroughly without needs of reading specification. The first method claim comprises 9 actions, from A to Z, including 4 actions from all hardware description languages (HDL), one from compiler manufactures and remaining 4 from digital designers. During that period, I ordered this book “Invention Analysis and Claiming.”I received the book on December 10, 2015, today is December 18, 2015. Here is what I have done during the week after I received the book:1. I abandoned all more than 50 claims I had drafted based on knowledge I learned from the book “Patent it Yourself.”2. I drafted two my broadest claims in method and apparatus categories strictly following instructions given in the book.Here I show them for your patent lawyer experts to comment. One comment: English is not my first language, most key words and claim types are copied or mimicked from the examples listed in the book. Here is my motto: “If you cannot do it perfectly, mimic it or copy it, and follow the leader’s teaching and steps.”1. A semiconductor chip having at least one wave-pipelined circuit that is generated based on an instruction carried out by a synthesizer.2. A semiconductor chip, as claimed in 1, wherein said instruction is a link concurrent statement.3. A method for use in transforming a code into a wave-pipelined circuit, said method comprising:a. Instructing that said code is for said wave-pipelined circuit; andb. Synthesizing said code into said wave-pipelined circuit;whereby a synthesizer, instead of a human, does all chores for generating said wave-pipelined circuit.4. A method for use in transforming a code into a wave-pipelined circuit, as in claim 3, wherein said instruction is a link concurrent statement.Of course any book has its drawback. Here are comments I would like to make:1. In chapter 12, Claims with functional language, pages 171-172, author can and should do better in a more direct way to describe the following important principle ( I don’t know if I understand it correctly):An inventor can claim all ways for an unsolved problem which nobody ever have thought of, even though he doesn’t resolve the problem himself or provide any details for resolving the problem. In other words, an inventor can claim a brand new problem which is useful as an invention, even though he doesn’t resolve the problem himself or provide any details for resolving the problem.I read the paragraphs more than ten times and finally I guess what the meaning of pages 171-172 is. Here I exemplify the principle using famous events in the mathematics history. If it is not correct, please correct me. Great mathematician David Hilbert mentioned 23 unresolved mathematical problems in 1902. If some of them were unknown when he mentioned, that really was, and math were permitted for patents, that is not, and the claim drafting were good enough as if they were drafted by the author, Hilbert would be the inventor of those math problems, even though he didn’t resolve the problems himself, and what’s more, he would enjoy all royalty from anyone who later resolved any of those problems using whatever a new method is. A big surprise, isn’t it!!!2. The book should add a new chapter especially for individual inventors instructing them how not to make stupid errors with more case judgments and more failed or successful stories, and more details and requirements in drafting claims in grammar. They, as like me, need author’s help even more than patent lawyers, and author can do more in this respect. Fortunately I didn’t read its subtitle “A patent lawyer’s guide” when I order the book, because I have no any desire to be a patent lawyer. I especially checked author’s resume: he has B.S. and M.S. degrees in electrical engineering from Columbia University, 35 years experiences in AT&T Bell lab and other big companies that is what I wanted most. After reading and doing drafting, I feel the book is very suitable for independent inventors in the same ways as for lawyers. So I suggest here that the book title in third version should be changed to “Invention Analysis and Claiming for Lawyer’s and Inventor’s Guide” with a new chapter for individual inventors.3. For inventors with an invention in application status, the big problem for them is not to find the invention concept, or invention departure, that is patent lawyer’s, but the rules and details to implement them perfectly and correctly. Every rules and details for prosecuting a patent application are mines to them. Here my situation is a proof. Even though the first version of broadest claim of my invention has 9 actions and all my more than 50 claims had made all errors ever mentioned in the book, but I am still very fast to learn and catch what my broadest invention concept is, fully based on and closely following the teaching from the book. My experience is: the book is excellent, easy to understand, easy to follow, not only tell you the tactics, but strategy on claim drafting and patent English grammar. Readers in computer science or electric engineering may know Donald Knuth’s book “The Art of Computer programming”, Bjarne Stroustrup’s “C++ Programming Language”, this book “Invention Analysis and Claiming” is the equivalence of the two books in claim drafting field: a book that must be read by any individual inventers who want to climb to the top of a success through their inventions.4. Finally I hope and like to get pay service on my final claim drafting from the author. I will send you an email to ask you to do so when I finally finish it.Weng

This is my favorite book - because it is so well-organized, easy to read, and useful for putting the concepts into practice.This is the first and most important book to read when writing patents -- whether you are the inventor or the IP attorney trying to decipher & transform a mess that an inventor has provided you into a valuable patent that will stand the test of time.

I have read almost every IP Drafting / Analysis books printed in the past 7 years and Ron Slusky's: Invention Analysis and Claim Drafting, 2nd edition is a must have for practitioners and inventors alike. It's by far one of the best written and structured books in the subject area.His book provides clear and valuable insights in analyzing new inventions and how to drill down and flesh out core inventive concepts. He combines best practices and a seasoned perspective in describing how to structure broad and highly diverse claims that captures core inventive concepts from a variety of defensible positions.If you came by this review because, like me, you realize how hard it is to find good material in this subject area BUY THIS BOOK, it's exactly what you are looking for.For a point of reference, this title a favorite 'go-to' reference with prime placement in my library next to similar books from BNA, ABA-IPLaw, Landis, and AIPLA.cheers!

This book is written for a wide audience. The writing is clear and the subject matter is well thought out and easy to understand. I learned many new things about how a patent should be structured and written so that its value can be maximized. For example, a patent is not a thing it is a concept that is most clearly defined by a problem solution statement. These are big ideas. The patent I am working on now is many times better because of the information I have learned in this book. Lots of good information in this book. This book has helped me greatly.

This book explained what my job was as an inventor when writing my utility patent application, it helped me to think in terms of the 'inventive concept' and not just the hardware of the invention. Well worth the money.

Ron provides a clear and concise presentation that one truly could only arrive at previously thought years of experience and/or under the guidance of a firm or company training in the "right" way. He lays out the process in clear and understandable language. Ron provides an insight into the processes going on inside the heads of senior Associates and partners, which may be obscure to the junior members of an IP group.

I have been practicing patent law for several years. In an effort to constantly improve my skills, I picked up this book after reading a shining review. This book is excellent. I actually enjoy drafting the claims for more than I have in the past (which was not very much). I used to feel that I was drafting a technical manual. Now I see it as a game. Excellent book!

Some things in the book are just nonsense. For example, on page 181, Slusky states that "whereby" is a conjunction and "wherein" is an adverb and goes on to make a case for using one over the other in drafting certain claims. A quick look at the Oxford English Dictionary indicates both are adverbs. Further, the Cambridge English Dictionary even classifies "wherein" as a conjunction. It would be interesting to know where Slusky learned his grammar.Other parts of the book also suffer from a Slusky eye view of patent law and claim drafting that do not comport with the real world.

Sincere thanks to the author for publishing this highly comprehensive and insightful guide. Great!

Most books I've read discussing patents just mention that you should 'see a lawyer', without really giving you an understanding of the nuances of why one should see a lawyer. If you're thinking of filing a patent or even just curious, this book helps you understand the importance of *why* it's so important, and all the ways it could go wrong.It also helped me fill in a lot of blanks around how patents work, especially w.r.t. the different areas (background, detailed descriptions, claims, etc) and what constitutes the true invention. This is money well spent in terms of knowledge learned, and it helps the book is well written enough to be interesting even to a non-lawyer.

A good primer for any Inventor!

very good book