Overview

No existing work instructs patent practitioners regarding the legal pitfalls of patent claim drafting in light of major court decisions and related to the substantive aspects of patent law as it exists today in a portable and relatively compact form. Patent Claim Drafting Practice addresses common concerns and/or pitfalls in this area of law, offering invaluable knowledge drawn from experience. For the less experienced practitioner, Patent Claim Drafting Practice discusses the basics of patent claim drafting. In particular, patent claim drafting mechanics is treated in detail. Extensive discussion is provided on types of patent infringement and types of patent claims. Patent claim construction is also handled. This discussion of the legal rules related to claim construction is used as a springboard to develop a set of principles to guide claim drafting. For the practitioner with a bit of experience desiring to sharpen his or her skills, Patent Claim Drafting Practice develops and provides a set of guiding principles to use when drafting patent claims, both basic principles and relatively advanced principles, respectively identified as such. The book, therefore, provides an extensive discussion for handling many important drafting issues, such as patent eligibility considerations, as simply one important example. In addition to providing up-to-date legal analysis based on up-to-date case law, many other considerations that may affect how best to draft patent claims are discussed, such as underlying economics or markets, differences in technical arts, etc. Throughout the book, discussions are supported with many examples of patent claim drafting using state of the art technology examples. The book, consequently, covers a host of patent law considerations and doctrines that have the potential to affect the drafting of patent claims. The book highlights key principles using bolded text within text boxes throughout. In addition to listing key principles at the beginning of each chapter and in an appendix, the book also includes in an appendix a sample of patent application boilerplate that covers a wide range of existing technologies.

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9781639052431

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Howard graduated Summa Cum Laude, Phi Beta Kappa, and Tau Beta Pi from Princeton University (Princeton, NJ) in 1982 with a B.S.E.E. Degree in Electric Engineering and Computer Science. He entered Duke University (Durham, NC) in 1984, simultaneously pursuing a Master’s Degree in Business Administration at the Fuqua School of Business and a Juris Doctorate Degree at Duke Law School. While at Duke, he served on the Editorial Board of the Duke Law Journal. He graduated with highest honors, Order of the Coif honors, and won the Willis Smith Award for being first in his law school class. Immediately after graduating from Duke, he began clerking for Judge Eugene Wright on the Ninth Circuit Court of Appeals in Seattle, WA. A year later, he entered private practice as a member of the Oregon bar, joining Stoel, Rives, a Pacific Northwest law firm headquartered in Portland. After spending two years in the Patent Group at Stoel, Mr. Skaist became an in-house patent attorney for General Electric Co. at its Corporate Research and Development Center outside Albany, New York. Eventually, he joined AT&T’s Bell Laboratories as an intellectual property attorney, prior to the formation of Lucent Technologies. He returned to the Pacific Northwest in 1996 rose to become Intel’s Director of Patents. In 2003, Mr. Skaist left Intel and founded Berkeley Law & Technology Group, (BLTG). Currently, BLTG has a total of twelve patent lawyers. BLTG handles all aspects of patent law practice, including: patent preparation and prosecution, patent strategy, portfolio building, and portfolio management, patent assertion and other patent license negotiation support , preparing patent opinion letters, and strategic oversight of patent litigation. Mr. Skaist was also an adjunct professor at the Berkeley School of Law (formerly, Boalt Hall) in Berkeley, CA, and at Willamette School of Law in Salem, OR, and has also taught patent law, copyright law, and computer law at Lewis and Clark Law School and Albany Law School. In addition, he is a member of the AIPLA and served for several years (1998-2001) on the Editorial Board of the AIPLA Quarterly Journal. Howard currently lives in Portland, OR. Here is a 3-4 minute video about my 30+ year career in IP and my new book on patent claim drafting. https://youtu.be/KFS27A_susE

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