Patent Law Practice Center

Fundamentals Of Patent Prosecution 2011 Highlights: Boot Camp for Claim Drafting & Amendment Writing

I’m sitting in this morning on Fundamentals of Patent Prosecution 2011: A Boot Camp for Claim Drafting & Amendment Writing and the first speaker of the day is John O’Brien, Co-Chair of the program and Practice Center Contributor, who provided tips on how to take an effective invention disclosure.  Here are some highlights from the presentation:

O’Brien discussed Engagement Letters and how the letter may minimize allegations made by a client that the lawyer improperly mishandled the matter in question.  He provided a suggested Engagement Letter Checklist that included: 

• Introduction with general description of matter
• parties included in representation
• any additional parties in matter who are not represented
• specific areas in which representation will be included
• specific areas which representation will not include
• establish the expectations
• detailed payment for services and timing for payment
• grounds for attorney termination
• primary responsible lawyer (more…)

Selected Aspects Of The Impact Of Patent Application Drafting And Prosecution

Louis S. Sorell, Patent Counsel at Google Inc. in New York City, sent in this article he wrote discussing issues that arise during patent prosectuon which may impact subsequent litigation.  Sorell will be speaking at PLI’s Fundamentals of Patent Prosecution 2011: A Boot Camp for Claim Drafting & Amendment Writing on June 17, 2011.  The following is an excerpt from the article:

Introduction

Issues often arise during patent prosecution which impact the course of subsequent patent litigation.  This paper discusses several specific areas in which decisions made during prosecution may particularly impact subsequent litigation.

A.   Background

With respect to the claim language itself, the words of the claims govern and are generally given their ordinary and customary meaning. The focus of this analysis is “what one of ordinary skill in the art at the time of the invention would have understood the term to mean.” (more…)

Patent Drafting: Language Difficulties, Open Mouth Insert Foot

The following post was written by Gene Quinn , of IPWatchdog and Practice Center Contributor.

Lately I have been this “educational” mindset more than is usual. Not only am I gearing up for the run of summer PLI Patent Bar Review Courses, which begin [this] week in New York City, but at the beginning of June I will be teaching a Patent Prosecution course for a week at the John Marshall Law School in Chicago, Illinois. What better topic to revisit than the importance of using the right language when describing an invention and dealing with an examiner. Patent attorneys darn near need to be magicians when it comes to language, which is the primary tool of our craft. Picking the right word and the right way to say things is critical. Even more critical, perhaps, is not saying the wrong thing, or worse yet saying something that is clear but not what you intended.

When dealing with the topic of picking and using the right language to describe an invention in a patent application it is worth observing that having a dictionary and thesaurus at the ready is a pre-requisite to being a good drafts-person. If you are not consulting a dictionary and thesaurus you are doing yourself, or your client, a tremendous disservice. But picking the right word is but one of the problems, and probably the easiest to deal with if you train yourself not to assume you have a Shakespearean grasp of the English language and force yourself to consult that dictionary and thesaurus. So today I thought I would focus on a couple big ticket matters that are easy to overlook, at least when patent novices are doing the drafting.

Click here for the full IPWatchdog article.