Claim Review with Enforcement in Mind

• Author: Ronald D. Slusky
• Pages: 259-263

CHAPTER SEVENTEEN

Claim Review with Enforcement

in Mind

Having drafted all our claims, we need to review them with the antici-

pated enforcement scenario in mind. The claim review should be carried

out at two levels: the overall claim suite level and the individual claim

level.

At the overall claim suite level, we need to assure ourselves that the

patent application contains all the claims that it should. And at the indi-

vidual claim level, we should assure ourselves that each individual claim

fulfills the function that was intended for it.

This chapter presents of a set of checklists for carrying out both levels

of review. Page references for each checklist item point the reader to the

relevant material.

Reviewing the Overall Claim Suite

Unpatentability/Invalidity

The overall claim suite should have claims that address the possible

unpatentability/invalidity of the application’s broadest claims. To this

end, the claim suite should include

• Fallback feature claims (pp. 123–124)

• Independent embodiment claims (pp. 126–133)

• Claims that are optimally chained within families (pp. 147–150)

• Claims that define the invention in diverse ways (pp. 243–255)

Maximizing the Patent’s Value to Its Owner

The overall claim suite should be reviewed to ensure that the claims will

maximize the patent’s value to the patent owner. To this end, the claim

suite should include

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