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Preface

In 1996 I told a prospective licensor that his portfolio of more than a dozen patents was substantially worthless. As it turned out, he had spent upwards of a million dollars on patent drafting and prosecution, and was understandably upset by that pronouncement. My comments were especially unwelcome to the patent attorneys who had achieved such poor results for so much money. As the discussions progressed it became clear that their bloated, uninspired applications had been drafted with little or no regard for high level strategic planning. It was as if a good athlete had run an exceptional race, but ran the wrong course.

Good patent drafting involves much more than just writing down what the inventor says he {fn}The author appreciates that many inventors, patent practitioners, and examiners are female. But since repeated use of the term "he or she" can distract from the message, the author has adopted the traditional use of the pronoun "he" to refer to both genders.{/fn} invented. Among other things the process involves: (a) understanding how the relevant field has evolved and where it is headed; (b) conceptualizing how the specific embodiments developed by the inventor can be viewed as a commercially significant barrier to competition in that field; and (c) drafting an application that covers all available commercially viable alternatives.

Over the past seventeen years I have focused much of my professional career on identifying, developing and using strategies that produce the strongest patent portfolios. I have also spent a fair amount of time training new patent attorneys in those strategies, and gleaning valuable insights from their mistakes. This book is a compilation of what I learned.

I would have much preferred to leave the writing to others. Unfortunately, the previously available patent drafting texts focus more on the mechanics of patent drafting than on strategic considerations. They teach the differences between a method claim and an apparatus claim, and how to structure a Markush group or a Jepson claim. But they don't teach when and how to use the various techniques. In addition, the focus of such books on the mechanics of the patenting process is almost completely useless to businessmen, investors, inventors and others. Those individuals need to understand the strategies of portfolio building, foreign filing, valuation, licensing, and so forth. From a financial standpoint they need to understand how to secure strong patent protection without breaking the bank.

Since the subtext of this book is all about obtaining the biggest bang for the buck, Chapter I starts out by focusing on what costs will likely be encountered in filing and prosecuting patent applications. Some of the costs are unavoidable, but many others result from the fact that patenting is a business. Patent attorneys tend to work by the hour, and tend to create ever more work themselves. Chapter I explains what to watch out for, and how to tell whether the patent attorney is working for the inventor, or the other way around.

Chapter II focuses on pre-drafting activities, i.e., what to do before even beginning to set pen to paper (or more accurately these days, finger to keyboard). There are generally two steps in pre-drafting activities, writing a disclosure and performing the initial patentability search. Writing of the disclosure can either be enormous help in drafting the application, or it can be waste of time. Chapter II explains how to achieve the former, and perhaps more importantly how to avoid shooting oneself in the foot by avoiding counterproductive statements. Chapter II then goes on to provide resources and strategies for the second step, conducting patentability and non-infringement searches. With modern Internet tools, attorneys and inventors alike can often perform high quality patentability searches without ever leaving their offices.

Chapter III addresses the general structure of a patent, and begins to focus the reader's attention on differences between "good" patents and "Bad" patents. This is a highly abstract discussion, but one that should be mastered to place the remainder of the book in perspective.

Chapters IV, V and VI focus on patent claims. Chapter IV addresses the mechanics of patent claims, including the different formats in common use, differences between structure and method claims, Markush and Jepson claims, and so forth. Chapter V moves on to claiming strategies, including the importance of using market-centered claiming as opposed to invention-centered claiming, how to best use independent and dependent claims, various aspects of target claiming, special aspects of claiming in various fields (biomedical, electrical, mechanical), and strategies for building an effective patent portfolio. Chapter VI is a claiming tutorial, providing real-world examples of good and bad claiming.

Chapters VII and VIII focus on the Specification portion of a patent application. Chapter VII walks the reader through the various parts of a Specification, from Title through Abstract and Drawing. The main emphasis is on drafting these sections in a manner that supports the claims, while avoiding the most common pitfalls in writing style. Chapter VIII is a tutorial on Specification drafting. The main emphasis is on drafting the Specification in a manner that anticipates, and hopefully obviates, problems during prosecution and litigation.

Chapter IX is directed to filing strategies. The filing of patent applications presents incredibly important strategic considerations, which despite their importance are often given short shrift in discussions between patent attorneys and their clients. It is always dismaying to speak with inventors who already filed a patent application through another law firm, but still have only the vaguest understanding about the benefits and drawbacks of various filing options, including especially filing of provisional applications. Many of those individuals appear to have never been told about PCT (international) patent applications, let alone about the benefits of filing PCT first, or even filing of petitions to make special or for accelerated examination. This chapter is critical for gaining an understanding of how to build a high value portfolio in a cost-effective manner.

Chapter X addresses issues relating to PCT (international) and foreign filing practice. Some of the rules and procedures in foreign patent offices are markedly different from those in the U.S. patent office, and there are numerous pitfalls that can surprise an inexperienced patent attorney. This chapter addresses the most salient differences.

Chapter XI focuses on effective patent prosecution, what to do and what to avoid during the back and forth arguing with the patent office. Despite years and years of reviewing file wrappers of patents prosecuted by other attorneys, I continue to be amazed at how poorly many attorneys deal with this aspect of patenting. Some attorneys are just terribly poor at interpersonal communications (surprise!), and manage to anger the patent examiners to a point where nothing will ever be allowed until the examiner either dies or moves on to another job. In other cases the reverse is true. The patent attorney is being perfectly reasonable, and the patent examiner is completely ignoring the law. Chapter XI provides pointers on dealing with both types of problems.

Chapter XII deals with valuation of patents. The chapter discusses the various valuation strategies, including the willing buyer/seller, marginal profit, and cost/replacement models. The chapter also provides guidance on appropriate royalty rates, and suggests strategies for resolving disparate valuations determined by opposite parties during negotiations.

Chapter XIII deals with possible infringement. The first section provides examples and pointers on drafting opinion letters. The balance of Chapter XIII addresses other steps that a patent attorney can take to proactively protect his client, whether that client is the patent holder or the alleged infringer.

Chapter XIV provides real-world suggestions on the procedural aspects of running a patent firm. Suggestions range from drafting assignments and licenses to use of prepared office forms.