Invention Analysis and Claiming: A Patent Lawyer's GuideInvention 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. |
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Too good and a must have for every person dealing with patents. Each portion is described brilliantly right from writing an application to amendments on rejection after examination.
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Contents
Inventions Are Concepts | 7 |
Begin from the Problem Not the Embodiment | 13 |
The ProblemSolution Statement | 21 |
The ProblemSolution Statement Reaching for Breadth | 31 |
Broaden Out the Problem | 39 |
The ProblemSolution Statement Reining in Overbreadth | 47 |
Fallback Features and the Planned Retreat | 55 |
III | 67 |
Statutory Claim Types | 167 |
Claim Diversity | 175 |
Claim Review with Enforcement in Mind | 187 |
VII | 191 |
PREPARING AND PROSECUTING THE PATENT APPLICATION | 193 |
Writing the Background and Summary | 195 |
Writing the Detailed Description | 211 |
Claim Rejections Amend or Argue? | 221 |
DRAFTING INDIVIDUAL CLAIMS | 69 |
ProblemSolutionBased Independent Claims | 71 |
InventiveDepartureBased Independent Claims | 81 |
Intermediate and NarrowScope Claims | 105 |
Definition Claims | 117 |
Assembling the Dependent Claims | 125 |
V | 141 |
THE CLAIM SUITE AND THE ANTICIPATED ENFORCEMENT SCENARIO | 143 |
Invention Settings and Direct Infringers | 145 |
Common terms and phrases
allowed amend analysis apparatus approach argue attorney Background beginning broad broad invention chair Chapter combination comprising contain context define definition dependent claim described Detailed Description device directed disclosed discussed drafting effective elements elongated embodiment encoding energy example fallback feature Figure four function further give going idea identify implement important independent infringement intended inventive concept inventive departure inventor issued Konaclip language least legs limitations machine manufacturer material means method microwave mind narrow necessary Notes operation Opposing oven particular patent application Planned Retreat portion position possible potential practice presented prior art problem problem-solution statement question reader recited reference rejection relative result seat serve setting signal solution solved specification steps structure subject matter Summary Team term thing thinking tion wherein writing
Bibliographic information
| Title | Invention Analysis and Claiming: A Patent Lawyer's Guide |
| Author | Ronald D. Slusky |
| Edition | illustrated |
| Publisher | American Bar Association, 2007 |
| ISBN | 1590318188, 9781590318188 |
| Length | 284 pages |
| Export Citation | BiBTeX EndNote RefMan |