Rules of Patent Drafting: Guidelines from the Federal Circuit

Experienced patent drafters have patents invalidated every day for reasons that are largely based on avoidable error. Rules of Patent Drafting: Guidelines from the Federal Circuit helps patent drafters avoid such errors by setting out and explaining the legal principles that govern patent prosecution, as set out by the Federal Circuit, the appellate division for all patent cases in the federal courts of the United States. The underlying theory of such an approach is that if one understands the rule - as distilled from the relevant Federal Circuit cases - one will also understand the law. Rules of Patent Drafting: Guidelines from the Federal Circuit is broken down according to these rules, each of which will be explained and presented along with the exact language judges have used to describe it. In addition, there is a supplemental section on writing, which though not specifically addressed by the Federal Circuit, is a topic that lends itself quite naturally to the presentation of the rules in question.

About the Author :
Joseph E. Root founded QualiPat, LLC to develop an innovative program for teaching patent drafting. He implemented that program as Chief Patent Counsel at UnitedLex, a legal consulting, technology and outsourcing firm, where he created a team from a group of engineers. Previously, he served as both patent and general counsel, in-house and out, with corporations and law firms, in a career spanning almost three decades. His primary focus has been the design and execution of IP strategies for high-tech industries, in Silicon Valley and internationally. Technology exposure has concentrated on software (systems and applications), together with semiconductor and optical devices, and internet-based business methods. He has extensive experience performing both portfolio management and hands-on patent prosecution, from invention planning to appeals. In addition, he has managed litigation in IP and commercial disputes, as well as participating as a litigator in a number of matters. He has been a frequent speaker and has published a number of articles on patent drafting and IP strategy.

Review :
"The contents and insights are refreshingly different from the type of thing that seems to be rehashed in books aimed at beginners. Furthermore, the author, Joseph Root, supports his contentions and illustrates his approach with reference to Federal Circuit Court of Appeal decisions...What is particularly refreshing though, is the style. The author emphasizes his points with similes and metaphors taken from an impressive range of books, films, and TV series. Despite thoroughly addressing weighty subject matter, the book is not a heavy read." --The IP Factor