Strategic Patent Claim Drafting : Practical and Business Perspectives

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  • Format: Paperback
  • Copyright: 2012-12-30
  • Publisher: Oxford Univ Pr
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Successful patent claim drafting is one of the most difficult tasks facing today's practitioner and requires a strong grasp of three separate disciplines that are frequently in a state of flux: patent law, technology, and the state of business and the economy. Strategic Patent Claim Draftingis the first to bridge the gap between a "how to" guide regarding the mechanics of patent claim drafting and a treatise detailing how the latest developments and trends in these three disciplines are likely to impact claim drafting, taking into account both legal costs and foreseeable risks toprovide the best legal protection for inventions. The title is thus meant to help practitioners better understand claim drafting from both mechanical and "strategic" perspectives, and will ultimately assist them in drafting better claims that--despite the inherent uncertainties involved--will proveto have the most commercial value to their clients. Strategic Patent Claim Drafting is divided into four overall sections. The first section is introductory and sets the tone by reviewing principles of good claim drafting that for the most part transcend case law developments. The second section takes the reader through the basics of claimdrafting, which, in general, involves a detailed discussion of the parts of a patent claim - the preamble, the transition word and the body. It is again noted that throughout the work, examples from either case law or purely hypothetical examples will be employed to illustrate the principles. Thethird section of the book discusses much more advanced considerations in claim drafting. These are issues that should be considered to provide the best legal protection; however, a relatively experienced patent practitioner would be best positioned to ably take advantage of all of the tips andtechniques discussed in this section of the book. Finally, the last section of the book discusses a handful of claim types that involve special considerations because of unique legal principles that have developed over the years around these claim types.

Author Biography

Howard Skaist is a founding partner of the Berkeley Law & Technology Group. Previously, he was Intel's Director of Patents, where he managed a staff of over 40, including patent attorneys, patent agents, paralegals, patent engineers, and administrative assistants. As Intel's Director of Patents, Mr. Skaist split his time between developing the substantive legal strategy for several of Intel's significant patent cases, leading several of Intel's major patent cross-licensing efforts, overseeing other patent analysis projects, and leading the strategic management of Intel's patent portfolio.

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