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[klaviernista]

In trying to locate a PDF of a case I cited in another thread, I came across the following paper on the AIPLA website.  It summarizes nicely various terms and phrases to avoid when drafting a patent application. 

http://www.aipla.org/learningcenter/library/papers/SM/2010-Spring-Meeting-Speaker-Materials/Documents/ED_2010_SM_Sandercock_PPR.pdf

Enjoy.

Klav

[sikoralaw]

Thanks for the PDF.  I will definitely check this site out.  I am really interested in their views of the Do's and Don'ts of Patent applications.  What did you think of the paper?

Michael

[Yak]

Same here Klav, thanks. 

[Alan Flum]

Thanks Klav, the article summarizes "what not to say" nicely.

Does anyone have any suggestions for books on this drafting patent applications that can hold up to litigation?

Thanks,
Alan

[patentatt]

Thanks Klav, the article summarizes "what not to say" nicely.

Does anyone have any suggestions for books on this drafting patent applications that can hold up to litigation?

Thanks,
Alan

In addition to some older books that others might recommend, try:

Rules of Patent Drafting: Guidelines from Federal Circuit Case Law by Joseph E. Root

And:

Strategic Patent Claim Drafting Practical and Business Perspectives by Howard Skaist

Oxford University Press is quickly developing a stellar line of books on patent law.

[patentatt]

From the article in the original post:

"A significant percentage of applicants, however, are neither so sophisticated nor so certain at their filing date about the prior art or the eventual scope of their claims, or even the different types of claims that they ultimately may want to present.6 For them, the greater likelihood is that their claimed inventions may change during prosecution and thus using the word invention will only disadvantage them by giving their competitors language with which they can seek to narrow the patented claims to a scope that they do not infringe."

[Alan Flum]

In addition to some older books that others might recommend, try:

Rules of Patent Drafting: Guidelines from Federal Circuit Case Law by Joseph E. Root

And:

Strategic Patent Claim Drafting Practical and Business Perspectives by Howard Skaist

Oxford University Press is quickly developing a stellar line of books on patent law.

Thanks for the suggestions. I am going to pick up the Joseph Root book. They have a Kindle version on Amazon for a very reasonable price for anyone interested. 

"A significant percentage of applicants, however, are neither so sophisticated nor so certain at their filing date about the prior art or the eventual scope of their claims, or even the different types of claims that they ultimately may want to present.6 For them, the greater likelihood is that their claimed inventions may change during prosecution and thus using the word invention will only disadvantage them by giving their competitors language with which they can seek to narrow the patented claims to a scope that they do not infringe."

Yes, I agree. A very interesting profession we are in. There are many dimensions to writing an effective patent application. What is confounding is that the court's interpretations at least to me seem to be always in flux.

[horsechute]

Since I am not into Kindle, I am going to have to see a copy of the book before I pay 200+ dollars for it, though I might add that it is nice to see people like Root writing books like this for such a limited audience, which may justify the high cost.

[Alan Flum]

Since I am not into Kindle, I am going to have to see a copy of the book before I pay 200+ dollars for it, though I might add that it is nice to see people like Root writing books like this for such a limited audience, which may justify the high cost.

I'm not into Kindle either, but Amazon now has Kindle software that lets you read Kindle books on both Mac and PC. For $35 for the electronic version vs $200+ for the hardcover version, for me anyway it is worth the inconvenience of reading the book on my computer.

By the way, I came across another book on the subject called "Patent Drafting for Litigation and Licensing", Bradley Wright editor (BNA Books). Unfortunately, it is pretty pricey.