Fundamentals of Patent Prosecution Highlights: Claim Drafting & Preparation of Patent Application

Another great presentation I sat in on today at Fundamentals of Patent Prosecution 2011 was an Introduction to Patent Drafting. The speaker was Willian Frommer of Frommer Lawrence & Haug .  Here are the highlights from the discussion:

 Frommer suggested that whenever possible, the attorney should interview the inventor to obtain a detailed understanding of the invention and that an attorney’s role is to learn of a specific embodiment of the invention, but also to predict possible alternative embodiments and implementations that may be brought to market. He offered two practice tips: 1) Courts will sometimes limit a claim to a preferred embodiment or even invalidate claims that are broader than the disclosed embodiments.  The more embodiments, the better.  Try to anticipate competing products that may affect your client’s market and 2) The inventor is often the best source for alternative embodiments. (more…)

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…)