Patent Application Drafting A Practical Guide

Author: Morgan D. Rosenberg
Publisher: Oxford University Press USA
ISBN: 9780199927258
Published In: July 2012
Format: Paperback , 383 pages
Jurisdiction: U.S. ? Disclaimer:
Countri(es) stated herein are used as reference only

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Contents
Author

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Teaches the drafting of patent applications from a practical perspective
Covers the entire patent application and includes many informative, wide-ranging, real-world examples illustrating the process from start to finish
Both a textbook and a reference book providing very general and very specific information respectively
Provides numerous appendices with additional examples, checklists, and further specific information
Contains a helpful and thorough glossary of patent-specific terms defined in language anyone can understand

The proper drafting of a patent application takes into account technical breadth, legal strategy, conformance with a vast number of rules and regulations codified in U.S. statutory law, guidelines issued by the United States Patent and Trademark Office, and over a hundred years of constantly evolving case law. Present texts on the drafting of U.S. patent applications generally fall into two categories: First are the weighty legal treatises that focus on theory and case law to the detriment of practical information; second are the "patent it yourself" books, which are very basic and limited in scope, and thus not of much use to a practicing patent attorney or patent agent.

Patent Application Drafting: A Practical Guide actually teaches the drafting of patent applications from a practical perspective. Intended as an introductory text, it covers the entire patent application and includes many helpful examples illustrating the process from start to finish. It is written for novice patent attorneys, agents, law students, and for those preparing for the patent bar exam.

Readership: Patent attorneys, patent agents, law students, and for those preparing for the patent bar exam

FOREWORD By Richard J. Apley
PREFACE
INTRODUCTION
Chapter 1: Claims
Part 1: Basic Elements of a patent Claim
A. Claim Structure
B. Claim Fundamentals
C. Dependent Claims
Chapter 2: Claims
Part 2: Types of Inventions and Types of Claims
A. Apparatus (U.S. Patent No. US 7,951,055 B2)
B. Method (U.S. Patent No. US 7,939,466 B2)
C. Product-by-Process (U.S. Patent No. 6,047,711)
D. Means-Plus-Function Claims (U.S. Patent No. US 7,958,663 B2)
E. Markush Claims (U.S. Patent No. US 7,601,324 B1)
F. Jepson Claims (U.S. Patent No. US 6,912,933 B2)
G. Software and Beuregard Claims
(U.S. Published Patent Application No. US 2010/0322422 A1)
H. Chemical
(U.S. Published Patent Application No. US 2010/0029467 A1)
I. Pharmaceutical
(U.S. Published Patent Application No. US 2010/0216881 A1)
J. Business Methods
(U.S. Published Patent Application No. US 2010/0312654 A1)
Chapter 3: Claims Part 3: Claim Construction
A. Choosing Essential Elements
B. Choice of Language
C. Punctuation
D. Plural Elements
E. Ranges and Measurements
F. Brevity
Chapter 4: The Summary of the Invention and the Abstract
A. The Summary of the Invention
B. The Abstract
Chapter 5: The Specification
A. Title
B. Priority Claims
C. Background of the Invention
D. Brief Description of the Drawings
E. Detailed Description of the Preferred Embodiments
Chapter 6: The Drawings
Chapter 7: 35 U.S.C. §101: Utility and Patentable Subject Matter Pg. 305
A. Patentable Inventions
B. General Utility Requirement
C. Mental Steps
D. Printed Matter
E. Products of Nature
Chapter 8: 35 U.S.C. §112: Enablement, Form, and Language
A. First Paragraph
B. Second Paragraph
C. Sixth Paragraph: Means-For Language
Chapter 9: 35 U.S.C. §102 and §103: Considering Prior Art
CHAPTER 10: A More Complex Example with Prior Art Considerations
A. Client's Original Disclosure
B. Prior Art Search and Analysis
C. Sketches
D. Claims
E. Summary
F. Abstract
G. Specification
H. Finalized Drawings
I. Issued Patent
Chapter 11: Prosecution Using the Complex Example
A. Office Action
B. Examiner's Cited Prior Art
C. Interview
D. Amendment
E. Notice of Allowance
Chapter 12: Algorithms, Business Methods, Computers, and Software
A. Introduction
B. Overview
C. Patent Office Guidelines and the Post-Bilski Aftermath
D. Claiming
E. The Specification
Chapter 13: Further Examples of Different Classes and Types of Applications
A. Apparatus
B. Method/Process
C. Product-by-Process
D. Improvement with Jepson Claims
E. Computers, Algorithms, Software and Business Methods
F. Chemical
G. Pharmaceutical and Treatment Methods
CHAPTER 14: Strategy and Enforcement
A. The Doctrine of Claim Differentiation
B. The Usage of Dependent Claims
C. Target Claiming
D. Realistic Enforcement
CHAPTER 15: Design Patent Applications
Appendix A: Example of Complete Application and Forms for Filing
Appendix B: Claim Drafting Checklist
Appendix C: Glossary
Appendix D: USPTO Interim Examination Instructions (August 24, 2009)
Appendix E: USPTO Interim Business Method Training Material
(August, 2009)
Appendix F: USPTO Guidelines for Business Methods (July 27, 2010)
A. 35 USC 101 - Practical Tips
B. Update on Business Method Patents and Best Practices to Streamline Examination
Appendix G: More on Business Methods
Appendix H: Bibliography
Index

Morgan D. Rosenberg, Attorney, Littman Law Offices

Morgan D. Rosenberg is presently the Director of Middle East Operations at Litman Law Offices in Manassas, VA. As a technical specialist, he writes and prosecutes patent applications. His specialties include claim drafting and analysis, PCT practice, right-to-use/infringement searches and analysis, validity/invalidity searches and analysis, and U.S. patent prosecution. He has written over 500 patent applications and over 500 patent amendments/responses to USPTO Office Actions. He is a regular contributor to Intellectual Property Today. He is also the author of The Essentials of Patent Claim Drafting (Oxford University Press, November 2011), and co-author with Richard J. Apley ofBusiness Method and Software Patents (Oxford University Press, January 2012). Patent Application Drafting: A Practical Guide is the third and final of his practice-oriented guides to the patent application process.