Rules for Patent Drafting

There are many books that relate to claim drafting. Rules of Patent Drafting by Joseph Root is different in that it relates to drafting patent specifications, not merely the claims. Its premise is that when a patent is litigated, terms not mentioned in the claims but used in the specification may be read into the claims by the court during claim construction in the so-called Marksman Hearings, so it is important to carefully consider the specification as a whole when drafting applications, and not merely the claims. The book implicitly rejects the idea propagated by do-it-yourself patent guides, that the inventor can write his own application and simply have a patent agent or attorney draft the claims.

Instead of moaning about what the courts do to patent claim interpretation in Marksman hearings, the book suggests internalizing the court’s approach and reconsidering one’s patent drafting, and provides rules for so doing. In particular, the book suggests writing longer and more detailed disclosures, while taking care not to describe optional features as necessary ones, of course.

One interesting insight about the claims is that since an independent claim has to be construed as being broader than its dependencies, a purpose served by claiming seemingly trivial elements in dependent claims is not to provide a fall back position, but rather to prevent these elements being construed as essential to the invention.

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.

Unlike most books on claim drafting that seem to focus on mechanical or electronic systems, the author relates to both the predictable and the unpredictable arts, and instead of simply saying that they are no longer popular, doesn’t shy from tackling means claiming in a thorough manner.

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.

ISBN13: 9780199734924
ISBN: 0199734925
Published: February 2011
Publisher: Oxford University Press USA
Country of Publication: USA
Format: Paperback
Price: £135.00

Categories: book review, Patents, US Patent Office, USPTO

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