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Author Topic: Resources for claim drafting?  (Read 553 times)

MSJ

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Resources for claim drafting?
« on: 03-15-17 at 05:29 pm »

Do you guys have any recommendations for books or other resources on claim drafting?

I'm a former IP associate transitioning into the role of a in-house patent agent. While I've read tons of claim sets, I've never written one before and it feels a little like teaching myself to swim by reading a book about it. I know what the end result's supposed to look like, but the process is unfamiliar and difficult.

Any help is appreciated. Thanks.
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smgsmc

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Re: Resources for claim drafting?
« Reply #1 on: 03-15-17 at 09:48 pm »

Invention Analysis and Claiming: A Patent Lawyer's Guide 2nd Edition
by Ronald D. Slusky

provides good insights into claim drafting.
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still_learnin

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Re: Resources for claim drafting?
« Reply #2 on: 03-16-17 at 10:34 am »

Invention Analysis and Claiming: A Patent Lawyer's Guide 2nd Edition
by Ronald D. Slusky

provides good insights into claim drafting.

I agree wholeheartedly. I'm sure some of us here disagree with at least some of Slusky's advice, but it's still a valuable resource. Slusky actually explains the thought process behind the claiming strategy, which is something I haven't seen elsewhere.

The classic is "Landis on Mechanics of Patent Claim Drafting." Here's a review from IP Watchdog:
http://www.ipwatchdog.com/2009/08/09/faber-on-mechanics-of-patent-claim-drafting-updated/id=4820/
[Note: Faber took over the book years ago, so now it's called "Faber on ..."]

IMHO, Slusky is far better for beginners.
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Robert K S

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Re: Resources for claim drafting?
« Reply #3 on: 03-16-17 at 11:25 am »

Some good recommendations above.  From a more holistic perspective, claim drafting in a way that avoids all the pitfalls and traps-for-the-unwary that litter the patent law requires experience and years of reading Board and court opinions.  It also requires knowing your art and what examiners in your art unit expect.  (As just one example, some examiners prohibit the phrase "configured to...", while others require it, or something like it, to introduce functional limitations.)  So from that perspective there is no way to get good at claim drafting except to spend years noting all the ways that others have fouled up, most of the time unwittingly, and then assiduously trying to avoid the same mistakes (or what turned out to be mistakes after courts pulled the rug out from under the claim drafters with new interpretations of the law).
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This post is made in the context of professional discussion of general patent law issues and nothing contained herein may be construed as legal advice.

MSJ

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Re: Resources for claim drafting?
« Reply #4 on: 03-16-17 at 03:27 pm »

I agree wholeheartedly. I'm sure some of us here disagree with at least some of Slusky's advice, but it's still a valuable resource. Slusky actually explains the thought process behind the claiming strategy, which is something I haven't seen elsewhere.

The classic is "Landis on Mechanics of Patent Claim Drafting." Here's a review from IP Watchdog:

[Note: Faber took over the book years ago, so now it's called "Faber on ..."]

IMHO, Slusky is far better for beginners.

Thanks, that sounds like what I'm looking for. From what I've heard, Landis/Faber is a little outdated.

Do you know of any significant differences between the 1st and 2nd editions of Slusky's book?
« Last Edit: 03-16-17 at 03:31 pm by MSJ »
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