Once upon a time, reading old patents was a major part of the training process for new patent attorneys and agents. Today, new practitioners who learn the ropes in that manner risk several mistakes. These mistakes may be relatively innocuous — such as extensive use of anachronisms like “said”, “wherein,” “herein,” and jargon that only an attorney would understand. However, in many cases the mistakes can change the scope or validity of the resulting patent. Recent caselaw relating to patentable subject matter, enablement, and sufficiency of the written description has caused a major shift in the way that today’s patent applications are drafting.
When training associates, patent agents, and paralegals about patent drafting and prosecution strategy, I typically rely on experience rather than books or formal training courses. Although many good books about patent prosecution exist, even the best ones tend to focus only on a specific part of the process (e.g., claim drafting), or they have a particular legal focus (e.g., USPTO procedures or Federal Circuit caselaw).
I recently received a complimentary copy of Rules of Patent Drafting by Joseph E. Root, and I must say that I’ve been looking for a book like this for quite a while. The book provides a concise, practical set of “dos and don’ts” about: (i) crafting claims with future licensing and litigation in mind; (ii) drafting a detailed description that avoids the many pitfalls that can arise due to recent caselaw; (iii) prosecuting the patent before the USPTO in a strategic manner; (iv) determining inventorship; and (v) avoiding inequitable conduct. Along the way, the book contains the author’s often-amusing observations about modern patent caselaw, such as:
Once upon a time, if one said @#$% or ^&*# on network television, the remark would be bleeped, and the FCC would be in an uproar. On the other hand, you could say “invention” in a patent application with no fear whatsoever. Now, that situation is completely reversed.
Rules of Patent Drafting a welcome “how-to” guide for patent attorneys and agents. I recommend it for any law firm’s patent library.