Invention Analysis and Claiming: A Patent Lawyer's Guide

Front Cover
American Bar Association, 2007 - Law - 284 pages
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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.
 

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Contents

Inventions Are Concepts
5
Begin from the Problem Not the Embodiment
11
The ProblemSolution Statement
19
The ProblemSolution Statement Reaching for Breadth
29
Broaden Out the Problem
37
The ProblemSolution Statement Reining in Overbreadth
45
Fallback Features and the Planned Retreat
53
II
65
Statutory Claim Types
165
Claim Diversity
173
Claim Review with Enforcement in Mind
185
IV
189
PREPARING AND PROSECUTING THE PATENT APPLICATION
191
Writing the Background and Summary
193
Writing the Detailed Description
209
Claim Rejections Amend or Argue?
219

DRAFTING INDIVIDUAL CLAIMS
67
ProblemSolutionBased Independent Claims
69
InventiveDepartureBased Independent Claims
79
Intermediate and NarrowScope Claims
103
Definition Claims
115
Assembling the Dependent Claims
123
III
139
THE CLAIM SUITE AND THE ANTICIPATED ENFORCEMENT SCENARIO
141
Invention Settings and Direct Infringers
143
Claim Amendments
227
Working with the Inventor
235
Inventive Concepts and Their ProblemSolution Statements
249
An Exercise for the Reader and the Author
259
Sample Patent
265
Selected Statutes and Regulations
269
Glossary
277
Index
281
Copyright

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