Overview

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. 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. The Essentials of Patent Claim Drafting is written primarily for novice patent attorneys and patent agents, as well as law students and those studying for the Patent Bar Exam.

Full Product Details

Author:   Morgan D. Rosenberg
Publisher:   Oxford University Press Inc
Imprint:   Oxford University Press Inc
Dimensions:   Width: 15.70cm , Height: 1.20cm , Length: 23.40cm
Weight:   0.344kg
ISBN:  

9780199856350

ISBN 10:   0199856354
Pages:   256
Publication Date:   17 November 2011
Audience:   Professional and scholarly ,  Professional & Vocational
Format:   Paperback
Publisher's Status:   Unknown
Availability:   Awaiting stock  

Table of Contents

FOREWORD BY RICHARD J. APLEY; PREFACE; INTRODUCTION; CHAPTER 1: BASIC ELEMENTS OF A CLAIM; A. CLAIM STRUCTURE; I) INTRODUCTION; II) EXAMPLE; III) THE CLASS AND PREAMBLE; IV) TRANSITIONAL PHRASES; V) THE CLAIM BODY; VI) THE PURPOSE CLAUSE; VII) ESSENTIAL FORM; B. CLAIM FUNDAMENTALS; I) SINGLE STATUTORY CLASSIFICATION; II) COMPLETENESS; III) DEFINITENESS; C. DEPENDENT CLAIMS; CHAPTER 2: TYPES OF CLAIMS; A. APPARATUS CLAIMS; B. METHOD CLAIMS; C. PRODUCT-BY-PROCESS CLAIMS; D. MEAN-PLUS-FUNCTION CLAIMS; E. MARKUSH CLAIMS; F. JEPSON CLAIMS; G. BEAUREGARD CLAIMS; CHAPTER 3: CLAIM CONSTRUCTION; A. CHOOSING ESSENTIAL ELEMENTS; I) BROAD VS. NARROW CLAIMING; II) APPARATUS CLAIMS; III) METHOD CLAIMS; B. CHOICE OF LANGUAGE; C. PUNCTUATION; D. PLURAL ELEMENTS; E. RANGES AND MEASUREMENTS; F. BREVITY; CHAPTER 4: 35 U.S.C. 101: UTILITY AND PATENTABLE SUBJECT MATTER; A. PATENTABLE INVENTIONS; B. GENERAL UTILITY REQUIREMENT; C. MENTAL STEPS; D. PRINTED MATTER; E. PRODUCTS OF NATURE; CHAPTER 5: 35 U.S.C. 112: ENABLEMENT, FORM AND LANGUAGE; A. FIRST PARAGRAPH; I) WRITTEN DESCRIPTION; II) ENABLEMENT, INOPERABILITY AND BEST MODE; B. SECOND PARAGRAPH; I)ARTICLES OF SPEECH; II) ALTERNATIVE LANGUAGE; III) NEGATIVE LIMITATIONS; IV) RELATIVE LANGUAGE; C. SIXTH PARAGRAPH: MEANS-FOR 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; A. HYPOTHETICAL EXAMPLE; I) DISCLOSURE; II) PRIOR ART; III) THE ESSENTIAL ELEMENTS AND THE POINT OF NOVELTY; B. REAL EXAMPLE FROM PATENT PRACTICE; I) ORIGINALLY FILED CLAIMS; II) PRIOR ART; III) THE ESSENTIAL ELEMENTS AND THE POINT OF NOVELTY; IV) ISSUED CLAIMS; V) PROSECUTION; CHAPTER 9: EXAMPLES; A. APPARATUS CLAIMS; B. METHOD CLAIMS; C. PRODUCT-BY-PROCESS CLAIMS; D. MEAN-PLUS-FUNCTION CLAIMS; E. MARKUSH CLAIMS; F. JEPSON CLAIMS; G. COMPUTER, SOFTWARE, BUSINESS METHOD AND BEAUREGARD CLAIMS; H. CHEMICAL AND PHARMACEUTICAL CLAIMS; CHAPTER 10: STRATEGY AND ENFORCEMENT; A. THE DOCTRINE OF CLAIM DIFFERENTIATION; B. THE USAGE OF DEPENDENT CLAIMS; C. TARGET CLAIMING; D. REALISTIC ENFORCEMENT; APPENDIX A: CLAIM DRAFTING CHECKLIST; APPENDIX B: GLOSSARY; APPENDIX C: PRIOR ART SEARCHING; APPENDIX D: BIBLIOGRAPHY; INDEX

Reviews

<br> 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. <br>--Richard J. Apley <br>Chief Patent Officer, Litman Law Offices, and former Director of the USPTO Office of Independent Inventor Programs <br><p><br> 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. <br>--Richard C. Litman <br>Patent and Trademark Attorney, Litman Law <br><p><br> 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. <br>--David R. Wood <br>Founder and President, Wood & Associates, LLC. <br><p><br>

<br> 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. <br><br>Richard J. Apley <br>Chief Patent Officer, Litman Law Offices, and former Director of the USPTO Office of Independent Inventor Programs <br><p><br>

<br> 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. <br>--Richard J. Apley <br>Chief Patent Officer, Litman Law Offices, and former Director of the USPTO Office of Independent Inventor Programs <br><p><br> 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. <br>--Richard C. Litman <br>Patent and Tr

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.

Author Information

Morgan D. Rosenberg is presently the Director of Middle East Operations at Litman Law Offices in Manassas, Virginia. He has specialized in patent application drafting for the past 15 years, and he is a regular contributor to Intellectual Property Today.

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