Details
- A practical how-to guide on the drafting of patent claims in U.S. patent applications
- Covers in detail the mechanics of assembling both basic and complex claims
- Discusses claim drafting from the perspectives of both initial patent application drafting, as well as future patent prosecution
- Offers a wide variety of examples of different claim types and styles
- Provides helpful illustrations and real world examples taken from issued U.S. patents and published applications
The claims of a patent application are, in many ways, the most important part of the application. The claims define the legal scope of patent protection granted by an issued patent, and also determine the course of the patent prosecution process. A properly drafted patent claim must take into account technical breadth, legal strategy, and conformance with U.S. statutory law, U.S. Patent and Trademark Office guidelines, and over a hundred years of case law.
The Essentials of Patent Claim Drafting is a practical guide to the drafting of patent claims in U.S. patent applications. The actual mechanics of assembling both basic and complex claims are covered in-depth from simple mechanical cases to complex chemical and pharmaceutical cases. The emphasis is on the how-to of claim drafting, rather than on the history and theory of claiming. It contains multiple examples for all types of claims which a practitioner is likely to draft, and provides an easy reference for the drafting of particular types of claims. The Essentials of Patent Claim Drafting is written primarily for novice patent attorneys and patent agents, as well as law students and those studying for the Patent Bar Exam.
Readership: Novice patent agents and experienced patent attorneys, law students and anyone studying for the patent bar exam
FOREWORD By Richard J. Apley
PREFACE
INTRODUCTION
Chapter 1: Basic Elements of a Claim
A. Claim Structure
i) Introduction
ii) Example
iii) The Class and Preamble
iv) Transitional Phrases
v) The Claim Body
vi) The Purpose Clause
vii) Essential Form
B. Claim Fundamentals
i) Single Statutory Classification
ii) Completeness
iii) Definiteness
C. Dependent Claims
Chapter 2: Types of Claims
A. Apparatus Claims
B. Method Claims
C. Product-By-Process Claims
D. Mean-Plus-Function Claims
E. Markush Claims
F. Jepson Claims
G. Beauregard Claims
Chapter 3: Claim Construction
A. Choosing Essential Elements
i) Broad vs. Narrow Claiming
ii) Apparatus Claims
iii) Method Claims
B. Choice of Language
C. Punctuation
D. Plural Elements
E. Ranges and Measurements
F. Brevity
Chapter 4: 35 U.S.C. §101: Utility and Patentable Subject Matter
A. Patentable Inventions
B. General Utility Requirement
C. Mental Steps
D. Printed Matter
E. Products of Nature
Chapter 5: 35 U.S.C. §112: Enablement, Form and Language
A. First Paragraph
i) Written Description
ii) Enablement, Inoperability and Best Mode
B. Second Paragraph
i)Articles of Speech
ii) Alternative Language
iii) Negative Limitations
iv) Relative Language
C. Sixth Paragraph: Means-For Language
Chapter 6: 35 U.S.C. §102 and §103: Considering Prior Art
Chapter 7: Algorithms, Business Methods, Computers and Software
Chapter 8: Practical Claim Drafting -Examples of the Process
A. Hypothetical Example
i) Disclosure
ii) Prior Art
iii) The Essential Elements and the Point of Novelty
B. Real Example from Patent Practice
i) Originally Filed Claims
ii) Prior Art
iii) The Essential Elements and the Point of Novelty
iv) Issued Claims
v) Prosecution
Chapter 9: Examples
A. Apparatus Claims
B. Method Claims
C. Product-By-Process Claims
D. Mean-Plus-Function Claims
E. Markush Claims
F. Jepson Claims
G. Computer, Software, Business Method and Beauregard Claims
H. Chemical and Pharmaceutical Claims
CHAPTER 10: Strategy and Enforcement
A. The Doctrine of Claim Differentiation
B. The Usage of Dependent Claims
C. Target Claiming
D. Realistic Enforcement
Appendix A: Claim Drafting Checklist
Appendix B: Glossary
Appendix C: Prior Art Searching
Appendix D: Bibliography
Index
Morgan D. Rosenberg, Director of Middle East Operations, Director of Middle East Operations at Litman Law Offices in Manassas, Virginia
Morgan D. Rosenberg is presently the Director of Middle East Operations at Litman Law Offices in Manassas, Virginia. He has specialized in patent application drafting for the past 15 years, and he is a regular contributor to Intellectual Property Today.
"The value of this book to patent practitioners is obvious, but I hope that the U.S. Patent Office also takes note, and begins to use this guide to train its new Patent Examiners in the meaning and structure of claims. New patent attorneys and Patent Examiners are well-trained in the theoretical aspects of Claims, but often have no knowledge of real world claiming. This book is perfect for educating both new patent attorneys and new Patent Examiners as to what a real claim actually looks like, and as to what it should (and should not) include."
--Richard J. Apley
Chief Patent Officer, Litman Law Offices, and former Director of the USPTO Office of Independent Inventor Programs
"The Essentials of Patent Claim Drafting is the clearest and most straightforward guide to claim drafting I have encountered since I started in patent law 30 years ago. It should be read by students, experienced practitioners, and anyone in between."
--Richard C. Litman
Patent and Trademark Attorney, Litman Law
"Proficiency in patent claim drafting requires years of experience built on a solid foundation of the basics. In The Essentials of Patent Claim Drafting, Morgan Rosenberg clearly presents the fundamentals of patent claims: what they are, how they protect intellectual property, and how they are constructed. Rosenberg covers all of the basics, from common claim grammar to the nuances of claim drafting in different technical fields. This text is a valuable learning tool, and should be on the bookshelf of any novice patent practitioner."
--David R. Wood
Founder and President, Wood & Associates, LLC.
