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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2023-2024 Edition
ISBN: 9781663364814
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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 2023-2024 Edition completely revises Chapter 9 - Practical Examples and Tips by Claim Type and Technology. It also 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.

The 2023 edition ISBN is 9781663340214.

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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  Practical Examples and Tips by Claim Type and Technology

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