Rules of Patent Drafting: Guidelines from Federal Circuit Case Law

Rules of Patent Drafting: Guidelines from Federal Circuit Case Law, by Joseph Root, gives patent drafters a wealth of strategic, organized information on the relevant case law issued by the Federal Circuit.
Publisher: Matthew Bender

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2021 Edition
ISBN: 9781663307217
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Rules of Patent Drafting: Guidelines from Federal Circuit Case Law, 2021 Edition, by Joseph Root, gives patent drafters a wealth of strategic, organized information on the relevant case law issued by the Federal Circuit, updated through December 2020.

This 2021 Edition addresses all Federal Circuit decisions through 2020. Analysis of Section 101 cases has been expanded and highlighted in a separate chapter. Author Joseph Root presents a unique approach to mastering the art of patent drafting by distilling Federal Circuit jurisprudence into a set of rules, each embodying the essence of requirements for patent validity in a given area. One cannot employ these rules by rote, but understanding and applying their underlying principles will lead to bulletproof patents. Earlier editions gained widespread praise from reviewers and bloggers.

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Table of contents

Introduction: The Disclosure Revolution

PART I Patenting for Breadth
CHAPTER 1 Eligibility
CHAPTER 2 Drafting for Breadth
CHAPTER 3 Claiming for Breadth
CHAPTER 4 Prosecuting for Breadth

PART II Specification Drafting
CHAPTER 5 Utility
CHAPTER 6 Written Description
CHAPTER 7 Enablement
CHAPTER 8 Best Mode

PART III Claim Drafting
CHAPTER 9 Preamble
CHAPTER 10 Transition
CHAPTER 11 Claim Body
CHAPTER 12 Definiteness
CHAPTER 13 Means-plus-Function Claims

PART IV Avoiding Problems
CHAPTER 14 Bars: Printed Publication
CHAPTER 15 Bars: Public Use
CHAPTER 16 Bars: On Sale
CHAPTER 17 Inventorship and Priority
CHAPTER 18 Inequitable Conduct

Table of Cases
Table of Statutes
Index