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Patent Application Drafting

Publisher: Matthew Bender
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Print Book :Softbound
2018 Edition
ISBN: 9781522148104
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2018 Edition
ISBN: 9781522148111
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2018 Edition
ISBN: 9781522148111
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Patent Application Drafting (2018 Edition), by Morgan D. Rosenberg: 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 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. The 2018 Edition further explains the procedures involved with U.S. patent application drafting, including the most recent case law and Patent Office guideline considerations. It is an ideal reference guide for novice patent attorneys and patent agents, as well as independent inventors, lawyers, and patent examiners.


• 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


I can only hope that each and every novice practitioner and newly minted Patent Examiner is handed this book on their first day. I don't know if reading a book can be considered a form of 'mentorship,' but this book is certainly the best attempt at old-fashioned teaching methods (i.e., the ones that actually worked) I've ever come across. --RICHARD J. APLEY Former Director of the Office of Independent Inventor Programs United States Patent and Trademark Office

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Table of Contents

CHAPTER 1 Claims Part 1: Basic Elements of a Claim

CHAPTER 2 Claims Part 2: Types of Inventions and Types of Claims

CHAPTER 3 Claims Part 3: Claim Construction

CHAPTER 4 The Summary of the Invention and the Abstract

CHAPTER 5 The Specification

CHAPTER 6 The Drawings

CHAPTER 7 Claims Part 35 U.S.C. § 101: Utility and Patentable Subject Matter

CHAPTER 8 Claims Part 35 U.S.C. § 112: Enablement, Form, and Language

CHAPTER 9 35 U.S.C. §102 and § 103: Considering Prior Art

CHAPTER 10 A More Complex Example with Prior Art Considerations

CHAPTER 11 Prosecution Using the Complex Example

CHAPTER 12 Algorithms, Business Methods, Computers, and Software

CHAPTER 13 Examples of Different Classes and Types of Applications

CHAPTER 14 Strategy and 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 Bibliography