Rules of Patent Drafting: Guidelines from Federal Circuit Case Law

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9780199734924: Rules of Patent Drafting: Guidelines from Federal Circuit Case Law

Patents are invalidated every day for reasons often stemming from avoidable error. Rules of Patent Drafting: Guidelines from Federal Circuit Case Law helps patent drafters avoid such errors with a set of patent drafting rules derived from Federal Circuit decisions. By focusing on drafting principles, instead of abstract legal concepts, the reader gains a coherent, integrated understanding of what the Federal Circuit requires. The rules point the way to confident drafting.

Rules of Patent Drafting: Guidelines from Federal Circuit Case Law addresses a major development in patent law over the last two decades - the Disclosure Revolution. Claim construction now depends more on support from the specification than any other factor, and other determinants of validity have followed suit. Written description, the doctrine of equivalents, and definiteness, all look to the specification to determine the application of each of these doctrines, and others as well. This book guides the drafter in meeting all the requirements that the Federal Circuit has set out for patent validity. Beyond demonstrating how to ensure bare validity, the book goes further to illustrate techniques for achieving desired coverage through rules teaching breadth in drafting, claiming, and prosecuting.

The rules-based approach to patent drafting provides a clear framework to assist both the beginner and the experienced practitioner. A learner is guided through the facets of a rule piece by piece, looking to the Federal Circuit rationale for each clause. Seasoned drafters can quickly update themselves or clarify specific points with precision. For either reader, the clear exposition communicates essential information rapidly and thoroughly.

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From the Back Cover:

"Joseph Root offers even the most seasoned patent practitioner a focused, user-friendly, up-to-date toolbox for successfully navigating the ever-changing waters of U.S. patent law. Root's writing style is direct, and the book is organized in a manner that makes it a ready reference for real world patent practice, arming the reader with practical guidelines and rules directly tied to federal case law. If drafting and prosecuting a patent to survive the scrutiny of a courtroom challenge is an art, this book will serve to sharpen the artistic ability of any reader."

Bob Marley
Chief Intellectual Property Council
"Joseph E. Root's Rules of Patent Drafting: Guidelines from the Federal Circuit provides comprehensive instructions for effective claim drafting with a clarity that is absent from most hornbooks. New practitioners would do well to read the Rules of Patent Drafting front to back, and then again; seasoned practitioners will likely use the Rules of Patent Drafting as a valued reference and teaching tool. All patent practitioners finally have a practical volume for use during the important drafting and prosecution phases of a patent's life. In short, this book is a welcome addition amidst a sea of litigation-focused offerings."

Joseph N. Ziebert
Chair, Electronics Practice Group
Partner - Foley & Lardner LLP

About the Author:

Joseph E. Root founded QualiPat, LLC to develop an innovative program for teaching patent drafting. He implemented that program as Chief Patent Counsel at UnitedLex, a legal consulting, technology and outsourcing firm, where he created a team from a group of engineers. Previously, he served as both patent and general counsel, in-house and out, with corporations and law firms, in a career spanning almost three decades. His primary focus has been the design and execution of IP strategies for high-tech industries, in Silicon Valley and internationally. Technology exposure has concentrated on software (systems and applications), together with semiconductor and optical devices, and internet-based business methods. He has extensive experience performing both portfolio management and hands-on patent prosecution, from invention planning to appeals. In addition, he has managed litigation in IP and commercial disputes, as well as participating as a litigator in a number of matters. He has been a frequent speaker and has published a number of articles on patent drafting and IP strategy.

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