Introduction

• Author: Ronald D. Slusky
• Pages: 209-210

Introduction to Part III: The Claim Suite

and the Anticipated Enforcement Scenario

Drafting claims that will be allowed by the patent examiner is only a part

of the patent attorney’s job. Another is anticipating what will happen

when the patent owner goes to enforce the claims—referred to here as

the “anticipated enforcement scenario.”

PART III—The Claim Suite and the Anticipated Enforcement Scenario—

describes how to assemble a suite of claims that maximizes the value

of the patent to the patent owner and that minimizes the possibility of

something going wrong at enforcement time.

CHAPTER FOURTEEN introduces the idea of invention settings. An

invention setting is a particular environment or context in which the

invention is manifest. For example, two settings for a lock invention

could be the lock itself and a key appropriate to operate the lock. It is

desirable to claim an invention in all of its commercially significant set-

tings in order to maximize a patent’s value when it comes time to enforce

it. Chapter Fourteen also introduces the idea of the “single reachable

party.” Enforcement of a claim can be difficult or impossible unless all

of its limitations are carried out by (a) a single party who is (b) subject to

the jurisdiction of the U.S. legal system (assuming a U.S. patent).

CHAPTER FIFTEEN emphasizes the importance of claiming an invention

using all appropriate statutory claim types. Consider a patent claiming

machinery that implements a novel manufacturing step. Machines on a

factory floor, especially their innards, are not easily inspected by outsid-

ers. It may be difficult to prove, therefore, that the competitor’s machine

meets each recited element of an apparatus claim. However, it may be

clear from the vended product that the novel step was used, making it

desirable to have method claims and claims directed to the product. A

statutory class is not the same thing as an invention setting. For exam-

ple, a given invention can be claimed in multiple settings using the same

statutory claim type, such as the lock and key mentioned above. An

invention can also be claimed within a single setting using more than

one statutory claim type. In addition, having claims in the right statutory

class may be crucial to the patent’s realizing its full economic potential.

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