Essentials of Patent Claim Drafting

Essentials of Patent Claim Drafting, by Morgan D. Rosenberg, covers the actual mechanics of assembling both basic and complex claims from simple mechanical cases to complex chemical and pharmaceutical cases. 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.
Publisher: Matthew Bender

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2021 Edition
ISBN: 9781663305374
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2021 Edition
ISBN: 9781663305381
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2021 Edition
ISBN: 9781663305381
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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.

This 2021 Edition further explains the procedures involved with patent claim drafting, addressing claim language considerations and the most recent case law and Patent Office guidelines. Thus, it is an ideal reference guide for novice patent attorneys and patent agents, as well as independent inventors, lawyers, and patent examiners.

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Table of contents

CHAPTER 1 Basic Elements of a Claim



CHAPTER 2 Types of Claims



CHAPTER 3 Claim Construction



CHAPTER 4 35 U.S.C. § 101: Utility and Patentable Subject Matter



CHAPTER 5 35 U.S.C. § 112: Enablement, Form, and 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



CHAPTER 9 Examples



CHAPTER 10 Strategy and Enforcement



APPENDIX A Claim Drafting Checklist



APPENDIX B Glossary



APPENDIX C The Remainder of the Patent Application -- General Notes on Patent Application Drafting



APPENDIX D Support in the Specification for Software and Computerized Methods



APPENDIX E Bibliography



APPENDIX F Sample Claim Terminology



INDEX