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First To File Patent Drafting, 2017 ed.

Product details:

Brand: Thomson West
Copyright: 2017
ISBN: 9780314876331
Service #: 42032958
Sub #: 42032956
Pages: 802
Shelf Space: 1 in.
Publication Frequency: Updated annually
Update format: Replacement pamphlets

Free update period with subscription:

90 days  (details)

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First To File Patent Drafting, 2017 ed.



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Book - softbound

First To File Patent Drafting is a single-volume treatise that provides options for, and guidance on, overall patent drafting strategies in the wake of the Leahy-Smith America Invents Act of 2011. The new reality is the “race to the courthouse” statutory scheme of the first to file patent law of the Leahy-Smith America Invents Act.

Complementary to providing suggestions for drafting options, this monograph is designed as the backbone for in-house continuing legal education programs for group study of the practical aspects of the new law. There are many changes that must take place in the routine of daily patent practice. As corporate practice and corporate expectations are heightened, this monograph is correspondingly important for the private practitioners to keep up with the changing demands for service.

One thing that is certain about the new world of patent drafting practice, is that one option not on the table is the possibility to proceed under the status quo with practice as before. Two major changes in practice must be understood:

First, it is imperative that before the patent draftsman picks up his figurative pen and pencil to start the process, the business objectives of the filing must be clearly stated and understood. One size does not fit all! At one extreme is when the business goal is for broad, offensive protection for an invention with minimal completed laboratory work. It could take many days (or weeks) to draft the application. At the other extreme, consider the situation where the business goal is for narrow, purely defensive protection for an embodiment about to be commercialized. In this situation, a patent draftsman, once given a “cook book” example of that embodiment, should be able to complete the entire drafting process with perhaps an hour or so.

The difference between the broad offensive and narrow defensive goals is not merely about the time to draft the application. There is a completely different drafting focus for each. Thus, the focus for broad, offensive protection is on the claims, whereas for purely defensive narrow protection the focus is entirely on the specific disclosure (where any claim will do).

Second, whatever the business objective for a particular filing, the drafting process must focus on the statutory core essentials. This approach necessarily demands a default reliance on the teachings of the Manual of Patent Examining Procedure (MPEP). For example, a Summary of the Invention should define key claim elements of the claims; it should also provide alternatives for such elements. But, this is nothing like the Summary set forth in the Manual that has entirely different requirements. Additionally, a default for many scenarios is the avoidance of a Background of the Invention that adds no value but, to the contrary, creates potential pitfalls to strong patent position. There are many more instances where the MPEP practice has not kept up with statutory and caselaw changes over the decades. For example, this monograph traces the requirement to disclose the “nature” of the invention (still in the Rules of Practice in Patent Cases) back to 1740 English caselaw, up through early nineteenth century American statutory law, and thence to its statutory abolition as from January 1, 1953.


  • Provides in-depth practical guidance to corporate managers, experienced practitioners, and new attorneys
  • Takes a minimalist view to draft the fewest claims and cite the fewest prior art references to provide a manageable application that the Patent Examiner can most efficiently consider
  • Only book in the field addressed to how an American should file a patent application under first to file procedures
  • Provides options for and guidance on overall patent drafting strategies in the wake the Leahy-Smith America Invents Act of 2011
  • Shows why the majority of guidance in the MPEP is anachronistic and should be ignored, while also focusing upon critical elements that are required, and how they can be efficiently drafted to both provide better patent protection and meet the filing urgency of first to file
  • Written by Harold C. Wegner, one of the world's preeminent experts on patent law and practice