Rules of Patent Drafting: Guidelines from Federal Circuit Case Law

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2017 Edition
ISBN: 9781522131960
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2017 Edition
ISBN: 9781522131977
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2017 Edition
ISBN: 9781522131977
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Rules of Patent Drafting: Guidelines from Federal Circuit Case Law (2016 Edition) presents a unique approach to mastering the art of patent drafting. Author Joseph Root distills Federal Circuit jurisprudence into a set of rules, each embodying the essence of requirements for patent validity in a given area. One cannot employ these rules by rote, but understanding and applying their underlying principles will lead to bulletproof patents. Earlier editions gained widespread praise from reviewers and bloggers.

The 2016 Edition updates previous text in the crucial areas of patent eligibility, definiteness, and inequitable conduct. Recent changes in those fields are placed in the context of previous decisions, and drafting advice has been modified to produce successful results. Where one cannot have much confidence in predicting future directions, drafters are directed toward a conservative approach most likely to achieve desired coverage. Drafters need guidance in drafting the cases in front of them today, and this work maintains a steady focus on the practical issue of drafting patent applications in the face of a confusing environment.

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Table of Contents

Introduction: The Disclosure Revolution



PART I Patenting for Breadth

CHAPTER 1 Drafting for Breadth

CHAPTER 2 Claiming for Breadth

CHAPTER 3 Prosecuting for Breadth



PART II Specification Drafting

CHAPTER 4 Utility

CHAPTER 5 Written Description

CHAPTER 6 Enablement

CHAPTER 7 Best Mode



PART III Claim Drafting

CHAPTER 8 Preamble

CHAPTER 9 Transition

CHAPTER 10 Claim Body

CHAPTER 11 Definiteness

CHAPTER 12 Means-plus-Function Claims



PART IV Avoiding Problems

CHAPTER 13 Bars: Printed Publication

CHAPTER 15 Bars: On Sale

CHAPTER 16 Inventorship and Priority

CHAPTER 17 Inequitable ConductCHAPTER 14 Bars: Public Use



Table of Cases

Table of Statutes

Index