Rules of Patent Drafting: Guidelines from Federal Circuit Case Law (2014 Edition) by Joseph Root: Patents are invalidated every day for reasons often stemming from avoidable error. Rules of Patent Drafting 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. The 2014 Edition has been completely updated to reflect important changes to patent drafting and prosecution resulting from the America Invents Act (AIA), arranged by drafting topic. It also includes analysis of the recent decision by the U.S. Supreme Court in Alice Corp. v. CLS Bank Int'l.
Features
· Written by a very experienced practitioner and patent drafter, who has a wealth of experience with Patent Law. Root's career spans the entire life of the Federal Circuit, and it includes patent preparation, prosecution, and litigation, from both hands-on and management perspectives.
· Provides important information that even the most expert patent drafters will find invaluable to help avoid patent invalidation
· Gives patent drafters a wealth of strategic, organized information on the relevant case law issued by the Federal Circuit
· A new approach to learning patent drafting, presenting an integrated set of rules. Each rule is internally coherent and complete, so that full understanding of the rule produces a complete grasp of all important facets of a topic.
· Text combines thoroughness and accessibility. Federal Circuit cases are fully presented, with sufficient factual treatment to assist understanding. Clear organization and writing promote understanding by IP specialists and non-lawyers alike.
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"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
Unisys
"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
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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