Invention Analysis and Claiming

A Patent Lawyer's Guide

Author: Ronald D. Slusky

Publisher: American Bar Association

ISBN: 9781590318188

Category: Law

Page: 284

View: 2830

Invention Analysis and Claiming presents a comprehensive approach to analyzing inventions and capturing them in a sophisticated set of patent claims. A central theme is the importance of using the problem-solution paradigm to identify the "inventive concept" before the claim-drafting begins. The book's teachings are grounded in "old school" principles of patent practice that, before now, have been learned only on the job from supervisors and mentors.

Invention Analysis and Claiming

A Patent Lawyer's Guide

Author: Ronald D. Slusky

Publisher: Amer Bar Assn

ISBN: 9781614385615

Category: Law

Page: 374

View: 3235

Invention Analysis and Claiming: A Patent Lawyer's Guide, Second Edition, presents a comprehensive approach to analyzing inventions and capturing them in a sophisticated set of patent claims. A central theme is the importance of using the problem-solution paradigm to identify the "inventive concept" before the claim-drafting begins. The book's teachings are grounded in "old school" principles of patent practice that, before now, have been learned only on the job from supervisors and mentors. Questions at the end of each chapter have been added to: Confirm the understanding of the principles presented; Explore the jurisprudential and practical implications of those principles; and Try out the invention analysis and claim drafting skills taught in the chapter."

Landis on Mechanics of Patent Claim Drafting

Author: Robert C. Faber

Publisher: Practising Law Institute

ISBN: 9780872240544

Category: Law

Page: 1870

View: 8798

The Securities Law of Public Finance is the authoritative resource you'll want to consult for the new rules to come as well as the current standards now in place. Written by one of the most respected figures in the field, the award-winning author and practitioner Robert A. Fippinger, this classic guide covers every vital area for you, from finance structuring to securities distribution to closings.

Patent Searching

Tools & Techniques

Author: David Hunt,Long Nguyen,Matthew Rodgers

Publisher: John Wiley & Sons

ISBN: 1118429257

Category: Law

Page: 208

View: 3315

Whether you're a patent examiner, patent attorney, commercial patent searcher, patent liaison, IP librarian, law professor, or competitive intelligence analyst, you'll find Patent Searching: Tools and Techniques to be just the guide you have been waiting for, with a range of approaches to patent searching that will be useful to you regardless of your technical expertise or role in the intellectual property community.

Patents for Business

The Manager's Guide to Scope, Strategy, and Due Diligence

Author: M. Henry Heines

Publisher: Greenwood Publishing Group

ISBN: 9780275993375

Category: Law

Page: 202

View: 6329

A practical, non-technical approach to managing your company's patent and invention portfolio, including filing patent claims, and protecting and managing your firm's assets.

The Essentials of Patent Claim Drafting

Author: Morgan D. Rosenberg

Publisher: Lexis Nexis

ISBN: 0199856354

Category: Law

Page: 206

View: 2314

In The Essentials of Patent Claim Drafting, Morgan D. Rosenberg provides a practical how-to guide on the drafting of patent claims in U.S. patent applications, and covers in detail the mechanics of assembling both basic and complex claims.

Strategic Patenting

Author: Robert D. Fish,Robert D Fish Esq

Publisher: N.A

ISBN: 9781425115470


Page: 611

View: 6985

Strategic Patenting is a comprehensive guide to patenting, from drafting and prosecution to valuation and licensing. Unlike standard patent law texts that don't teach patent drafting, or drafting guide books that teach only the basic mechanics, this book reveals the strategic consideration underlying patent practice. Among other things, the book: Explains the financial aspects of patenting, (e.g. why costs are so high; why a drafter should use fewer independent claims; why divisionals can be great for building a patent attorney's business, but are terrible for applicants; how to choose domestic and foreign filing strategies); Explains how to search patentability, using paid and free resources, why, when and how to use keyword and classification searching, how to get the patent offices to conduct the search early on, and how to set up ongoing searches; Guides the reader to draft claims that really have value, (e.g. using overlapping targets, market-centered claiming, and using creative claiming to secure broad protection in crowded markets); Guides the reader in determining how to build a patent portfolio, both to maximize the protection on an applicant's own invention, and to lay a wet blanket over further developments of the competition; Explains how to deal with rejections both from technical and humanistic standpoints; and discusses when, how, and why applicants should file continuations, divisionals, continuations-in-part, and appeals; Includes information that a practicing patent attorney or agent needs to know to run a practice, including office procedures, strategic considerations for licensing, and valuation of patents; Includes numerous appendices, such as a patent opinion letter, due diligence checklist for transferring IP rights, sample forms for assignments and licenses, and a sample commercialization agreement. The book is a must-read for new and experienced practicing practitioners, inventors, and business management — anyone involved with patents.

Fundamentals of United States Intellectual Property Law

Copyright, Patent, and Trademark

Author: Sheldon W. Halpern,Kenneth L. Port,Sean B. Seymore

Publisher: Kluwer Law International

ISBN: 9789041159663

Category: Law

Page: 376

View: 9156

This completely revised and up to date Fifth Edition of this well received work offers in one volume a comprehensive review of United States copyright, patent, and trademark laws. The material has been completely updated and includes detailed discussion of the 2011 America Invents Act, the Supreme Courte s Golan and Aereo decisions, as well as other pertinent developments in U.S. law. It provides thorough and sophisticated treatment of this complex material in a form both less cumbersome than a treatise and considerably deeper and more sophisticated than a study outline or e nutshelle ."

How to Write a Patent Application

Author: Jeffrey G. Sheldon

Publisher: N.A

ISBN: 9781402425608

Category: Law

Page: 1246

View: 593

Stocked with drafting checklists and sample drafting language, documents and drawings, the second edition of How to Write a Patent Application walks you step-by-step through the entire process of preparing patent applications. This hands-on resource helps you: Get from an inventor all the information needed to prepare an effective application Claim an invention with sufficient breadth Claim an invention so that the elements that render the invention nonobvious are clearly set forth in the claims Claim an invention whose validity will be sustained by the courts Avoid damaging drafting mistakes such as faulty transitions, inconsistent terminology, incorrect verb forms, and deficient functional language Completely up-to-date, How to Write a Patent Application analyzes developments under the America Invents Act, the latest USPTO initiatives, and key decisions of the federal courts, and provides the author s practical suggestions and commentary."

Patent Application Drafting

A Practical Guide

Author: Morgan D. Rosenberg

Publisher: OUP USA

ISBN: 9780199927258

Category: Law

Page: 664

View: 6152

Patent Application Drafting: A Practical Guide, by Morgan Rosenberg, teaches the drafting of patent applications from a practical perspective. It covers the entire patent application and includes many helpful examples illustrating the process from start to finish.

The Independent Inventor's Handbook

The Best Advice from Idea to Payoff

Author: Louis Foreman,Jill Gilbert Welytok

Publisher: Workman Publishing

ISBN: 1523507683

Category: Technology & Engineering

Page: 242

View: 5464

How do you actually turn a million-dollar idea into a million dollars? From scribble-on-the-napkin to product-on-the market, The Independent Inventor's Handbook explains everything a potential inventor needs to know and the tools he or she needs to use to take a raw concept and turn it into reality. Written by Louis J. Foreman, creator of the PBS series Everyday Edisons and a holder of multiple patents, together with patent attorney Jill Gilbert Welytok, here's a book that speaks directly to the inventive American—the entrepreneur, the tinkerer, the dreamer, the basement scientist, the stay-at-home mom who figures out how to do it better. (over one million of them file patents each year.) Here is everything a future inventor needs: Understanding the difference between a good idea and a marketable idea. Why investing too much money at the outset can sink you. The downside of design patents, and how best to file an application for a utility patent. Surveys, online test runs, and other strategies for market research on a tight budget. Plus the effective pitch (hint: never say your target audience is "everyone"), questions to ask a prospective manufacturer, 14 licensing land mines to avoid, "looks-like" versus "works-like" prototypes, Ten Things Not to Tell a Venture Capitalist, and how to protect your invention once it's on the market. Appendices include a glossary of legal, manufacturing, and marketing terms, a sample nondisclosure agreement, and a patent application, deconstructed.

Litigation-Proof Patents

Avoiding the Most Common Patent Mistakes

Author: Larry M. Goldstein

Publisher: N.A

ISBN: 9780989554114

Category: Patent laws and legislation

Page: 223

View: 6771

This book explains the principles of excellent patents, presents ten of the most common errors in patents, and details a step-by-step method for avoiding these common errors and writing excellent patents. Specific patents are shown to commit or avoid the most common patent mistakes. Litigation-Proof Patents is the second of three books that make up ?The Patent Quality Series?. The book includes four main sections: First, a discussion of the story told by each patent, and a detailed method for writing an excellent patent application. Second, principles of litigation-proof patents, including principles for good patent claims, Key Claim Terms, different types of claims, patent value, seminal patents, and writing patent applications. Third, a detailed explanation of the ten most common mistakes in patents, and how to avoid these mistakes. Fourth, case studies of patents, including the frequency hopping electronic communication patent of the Hollywood actress Hedy Lamarr, the patents covering the popular board game Monopoly®, and Apple?s ?slide-to-unlock? patent. This book is intended for anyone who wants to improve patent quality and patent value by avoiding the mistakes most commonly seen in patents. It is intended also for anyone reading or evaluating a patent who wants to know, ?Are there any glaring mistakes that detract from this patent?s quality and value??

Not So Obvious

An Introduction to Patent Law and Strategy

Author: Jeffrey Schox

Publisher: CreateSpace

ISBN: 9781517273934


Page: 192

View: 7427

The first edition of this book was written by Jeffrey Schox for his course "Patent Law and Strategy for Innovators and Entrepreneurs" at Stanford University. After an introduction to intellectual property, it explores the patent system, the requirements for a patent, infringement, and inventorship and ownership issues. The second edition included the America Invents Act ("AIA"), which transformed the U.S. patent system from a "first-to-invent" system to a "first-inventor-to-file" system. The third edition added a glossary and general edits. The fourth edition includes five additional cases: KSR (Supreme Court 2007), Stanford v. Roche (Supreme Court 2011), Prometheus (Supreme Court 2012), Nautilus (Supreme Court 2014), and Limelight (Fed. Cir. 2015).

WIPO Patent Drafting Manual

Author: World Intellectual Property Organization

Publisher: WIPO

ISBN: 928051640X

Category: Law

Page: 138

View: 3665

This Manual has been prepared in response to repeated demands from developing country Member States for capacity building in patent drafting due to the existing limited professional capacity in this area which is an obstacle to the utilization of the intellectual property system by their nationals. The target audience for this Manual is primarily but not exclusively in developing countries and consists of scientists, researchers, technically trained persons and attorneys with a technical background who wish to draft patent applications. The Manual provides the necessary guidelines and an understanding of the skills needed for drafting a patent application, filing it and working with patent authorities to have it issued as a patent. The primary aim of this Manual is to assist all inventors in protecting their intellectual property through carefully crafted patent applications.

Patent Claim Construction

Author: Robert C. Kahrl

Publisher: Wolters Kluwer Law & Business

ISBN: 1454801190

Category: Law

Page: 1142

View: 1970

This practical resource helps lawyers of all experience levels gain a firm footing in the rapidly evolving rules of claim construction with expert analysis of emerging methodologies for interpreting patents, a complete guide to the evidence, or modes of proof, accepted by the courts in applying claim construction principles and specific guidance on how the courts are likely to interpret certain phrases, terms, or forms of claims in Markman hearings. By Robert C. Kahrl. Patent Claim Construction is the first comprehensive treatise on claim construction in the U.S. Court of Appeals for the Federal Circuit. This practical resource helps lawyers of all experience levels gain a firm footing in the rapidly evolving rules of claim construction. This knowledge thereby allows for the systematic and efficient identification of the rules most advantageous to the client's position. Patent Claim Construction offers expert analysis of emerging methodologies, reflected in current case law for interpreting patents as a matter of the law and detailed descriptions of the cases applying the rule, as well as commentary describing the trend toward or away from favoring that particular rule. Additionally, the author includes a complete guide to the evidence, or modes of proof, accepted by the courts in applying claim construction principles and specific guidance on how the courts are likely to interpret certain phrases, terms, or forms of claims.

Provisional Patent Applications

Use and Abuse

Author: Mr Larry M Goldstein,Mr Gil Perlberg

Publisher: N.A

ISBN: 9781983803000


Page: 236

View: 3674

PROVISIONAL PATENT APPLICATIONS: Use and Abuse is the completion of a four-book series on the topic of quality in patents and patent portfolios. This book describes a provisional patent application (PPA), shows how it differs from an ordinary non-provisional application (NPA), and explains how it can provide an early priority date for later applications and patents. There are few formal requirements for a PPA, which can be good in that it gives freedom to explain an invention in the inventor's own words, but can also be bad in that the application often fails to explain the invention clearly and comprehensively. Critically important is that the PPA present and define the "key claim terms" (KCTs) that will later be used in the claims of an ordinary patent application and a resulting patent. If a PPA defines these terms and explains the invention well, it is a "good" application. If it does not, then it is a "bad application." The book includes four chapters. - First, a discussion of the provisional application generally, including its advantages and disadvantages relative to a non-provisional application. - Second, four specific cases of very good PPAs, which create a model against which other PPAs may be judged. Each case includes an introduction, a statement of what happened, and a summary in the form of Lessons Learned from that case. - Third, nine cases of bad PPAs, in which all legal protection is lost, or in which the PPA fails to provide an early priority date for later applications and patents. - Fourth, a summary of the major lessons in the book, organized by strategy, quality, and drafting of provisional applications. PROVISIONAL PATENT APPLICATIONS: Use and Abuse is intended to help patent professionals and inventors draft provisional applications clearly and broadly, thereby providing the early priority dates necessary to protect inventions. It is intended also for corporate and IP executives, as well as engineers, who are not actively involved in the drafting process but who want to understand how to make best use of the provisional format.

Patent Fundamentals for Scientists and Engineers, Third Edition

Author: Thomas T. Gordon,Arthur S. Cookfair,Vincent G. LoTempio,Brendan S. Lillis

Publisher: CRC Press

ISBN: 1466509457

Category: Law

Page: 210

View: 2857

The most significant overhaul of the U.S. patent laws in decades occurred with the recent passage of the Leahy-Smith America Invents Act (AIA). Understanding the law that dictates what a patent is and how a patent is obtained and enforced, and the recent changes through statute or case law litigation presents unique challenges. This third edition of Patent Fundamentals for Scientists and Engineers examines the new Act and provides an overview of the patent system for the independent inventor as well as for members of the scientific and business community—whether a scientist, engineer, supervisor, or manager. In addition to a new chapter dedicated to the America Invents Act, the third edition includes annotations of the recent law changes, updates in all chapters, new figures, and new case studies. The authors discuss patent filing outside of the United States and also dedicate a chapter specifically to the Canadian patent system. They describe the key topics that anyone involved in the patent process needs to know, including what makes an invention patentable, the art of patent searching, and the crucial role of record keeping. The text also includes an indispensable glossary of patent terminology, as well as an appendix with sample U.S. Patent and Trademark Office (USPTO) forms. This book provides a valuable guide to assist inventors in dealing with the USPTO, as well as with patent professionals. The text describes the patent process from conception to application filing and is a must-have reference for scientists and businesspeople alike. Since the role of patent professionals is to obtain the maximum protection for inventors, both the inventor and businessperson would be well advised to understand and participate in all the steps involved. This book offers an excellent insight into the patent process.