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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2020 Edition
ISBN: 9781522175872
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ISBN: 9781522175889
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2020 Edition
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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 2020 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.


•  A practical how-to guide on the drafting of patent claims in U.S. patent applications
•  Covers in detail the mechanics of assembling both basic and complex claims
•  Discusses claim drafting from the perspectives of both initial patent application drafting, as well as future patent prosecution
•  Offers a wide variety of examples of different claim types and styles
•  Provides helpful illustrations and real world examples taken from issued U.S. patents and published applications


The value of this book to patent practitioners is obvious, but I hope that the U.S. Patent Office also takes note, and begins to use this guide to train its new Patent Examiners in the meaning and structure of claims. New patent attorneys and Patent Examiners are well-trained in the theoretical aspects of Claims, but often have no knowledge of real world claiming. This book is perfect for educating both new patent attorneys and new Patent Examiners as to what a real claim actually looks like, and as to what it should (and should not) include. --Richard J. Apley, Chief Patent Officer, Litman Law Offices, and former Director of the USPTO Office of Independent Inventor Programs

The Essentials of Patent Claim Drafting is the clearest and most straightforward guide to claim drafting I have encountered since I started in patent law 30 years ago. It should be read by students, experienced practitioners, and anyone in between. --Richard C. Litman, Patent and Trademark Attorney, Litman Law

Proficiency in patent claim drafting requires years of experience built on a solid foundation of the basics. In The Essentials of Patent Claim Drafting, Morgan Rosenberg clearly presents the fundamentals of patent claims: what they are, how they protect intellectual property, and how they are constructed. Rosenberg covers all of the basics, from common claim grammar to the nuances of claim drafting in different technical fields. This text is a valuable learning tool, and should be on the bookshelf of any novice patent practitioner. --David R. Wood, Founder and President, Wood & Associates, LLC.

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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 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