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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.