Book Review: The Essentials of Patent Claim Drafting

The Essentials of Patent Claim Drafting by Morgan D. Rosenberg is a straightforward practical guide to drafting claims, aimed at the beginner. To the extent that one can learn to draft claims from a book, this is not a bad tutorial.

As with many such works however, it is strongly biased to mechanical type drafting. Software and physics are covered to some extent, but the focus is heavily on the predictable arts. The claim style is a little long-winded and pedantic for my taste. The focus is on USPTO requirements, but nevertheless, in my opinion, a chapter dedicated to the differences in US approach, from say, that of the EPO, would be a valuable addition.

The thrust is on drafting claims for obtaining patents. System, Method, product-by-process, Jepson, Markush and Beauregard  claim styles are discussed and illustrated, as are means+function, which are discouraged. Free Beer claims are not mentioned unfortunately. Nor are other claim styles disallowed in the US such as omnibus claims.  Since ultimately a patent might be litigated, there should perhaps be some discussion on claim construing in Marksman hearings and the need to make sure that terms cannot be misinterpreted.  Nevertheless, a useful guide for beginners.

  • Paperback: 224 pages
  • Publisher: Oxford University Press, USA (November 17, 2011)
  • Language: English
  • ISBN-10: 0199856354
  • ISBN-13: 978-0199856350
  • $125

One Response to Book Review: The Essentials of Patent Claim Drafting

  1. Mike says:

    I am a novice when it comes to patent claiming. What other books would be recommended for someone wanting to file patents related to physics.

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