Faber on Mechanics of Patent Claim Drafting

by Faber, Robert C.

• ISBN13: 9781402424267
• ISBN10: 1402424264
• Edition: 7th
• Format: Loose-leaf
• Copyright: 2015-09-07
• Publisher: Practising Law Institute

Summary

More patent applications are rejected because of claim drafting flaws than because of problems with inventions. A trusted working tool for more than two decades, Faber on Mechanics of Patent Claim Drafting spotlights proven claim drafting practices and techniques that have been firmly established by patent authorities and custom. This lucid, time-saving handbook offers you:

• Start-to-finish directions for each type of claim—apparatus or machine, method or process, composition of matter, article of manufacture, and biotechnology.
• Extensive discussion of nonart rejections, classic and more recent constructions of means clauses, inherent function of the apparatus doctrine, mental steps and computer programs, product-by-process claims, and claims referring to drawings.
• Quotations from litigated claims to help you see which types of limitations and phrases have (and have not) been “judicially approved.”
• Real-world examples of dependent claims, Jepson claims, generic and species claims, subcombination claims, and biotechnology.
• Numerous tips on how to avoid common claim drafting mistakes.
• Definitions and preferred usage of stylized words and phrases in patent law, such as “comprising,” “consisting,” “means for,” “step for,” and “whereby.”
• Guidance on how to review claims to eliminate errors and superfluous language.

Faber on Mechanics of Patent Claim Drafting examines:

• Ways of avoiding transition words that can cause unnecessary claim interpretation problems.
• Claim terms that are incapable of interpretation and can render claims indefinite and invalid.
• Problematic alternative expressions.
• Practical issues involved in amending filed claims, claiming numerical ranges and amounts, and disclosing in a specification several alternatives of elements or embodiments of the invention.

Faber on Mechanics of Patent Claim Drafting provides full coverage of U.S. Supreme Court and other court decisions critical to claim drafting. It is an indispensable guide for patent specialists and other intellectual property attorneys, corporate counsel, and non-specialists who represent inventors, patent officials, and inventors.

Table of Contents

Chapter 1:	Statutory Provisions—Some Basic Principles
Chapter 2:	Claim Forms and Formats in General
Chapter 3:	Apparatus or Machine Claims
Chapter 4:	Method or Process Claims
Chapter 5:	Other Types of Claims
Chapter 6:	Composition of Matter Claims—Chemical Cases
Chapter 7:	Claims of Varying Scope
Chapter 8:	Nonart Rejections
Chapter 9:	Claiming Biotechnology Inventions
Chapter 10:	Thoughts on Writing a Claim
Appendix A:	Claim-Drafting Principles and Practice in Claim-Drafting Techniques
Appendix B:	The Art of Describing Structures in Patent Drawings Including a Glossary of Mechanical Terms
Appendix C1:	Primary Sources: Title 35 United States Code (Selected Sections)
Appendix C2:	Primary Sources: Rules of Practice (Selected Sections)
Appendix C3:	Primary Sources: Manual of Patent Examining Procedure (Selected Sections)
Appendix C4:	Primary Sources: 2014 Interim Guidance on Patent Subject Matter Eligibility 79 Fed. Reg. 74,618 (Dec. 16, 2014)
Appendix C5:	Primary Sources: Patent Office Examples: Abstract Ideas
Appendix D:	Glossary and Index of Patent Terms