Patent Application Drafting
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Patent Application Drafting (2023-2024 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 2023-2024 Edition completely revises Chapter 2 - Practical Examples and Tips by Claim Type and Technology. It also 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
The 2023 edition ISBN is 9781663340252.
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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 Strategy and Enforcement
CHAPTER 14 Design Patent Applications
Appendix A Claim Drafting Checklist
Appendix B Glossary
Appendix C Bibliography
Appendix D Utility Patent Application Template
Appendix E Design Patent Application Template
Appendix F U.S. Patent Application Filing Checklist
Appendix G Reissue Application Filing Checklist