Some recent publications

The Essentials of Patent Claim Drafting, by Morgan D. Rosenberg, has recently been published out of the New York desk of Oxford University Press. Morgan is Director of Middle East Operations, Director of Middle East Operations at Litman Law Offices, Manassas, Virginia, but he has still found time to put this impressive work together. A regular contributor to Intellectual Property Today, he has specialised in drafting patent applications for the past one and a half decades, a fact that may fill the reader with admiration or sympathy, depending on his view of patent drafting and the various demands made on those who draft them by clients and officials.

According to the publisher's web-blurb, this book is "a practical how-to guide on the drafting of patent claims in U.S. patent applications". That is not to say that it is without interest to the non-US reader, and with increasing cooperation between the major national and regional offices the relevance of the US experience to those outside the jurisdiction is only likely to increase. The web-blurb continues:
"The claims of a patent application are, in many ways, the most important part of the application [Come now, surely the claims can't be that important, can they? Or rather, isn't this stating the obvious ...?]. The claims define the legal scope of patent protection granted by an issued patent, and also determine the course of the patent prosecution process. A properly drafted patent claim must take into account technical breadth, legal strategy, and conformance with U.S. statutory law, U.S. Patent and Trademark Office guidelines, and over a hundred years of case law [Ah, now we're talking!]. 
The Essentials of Patent Claim Drafting is a practical guide to the drafting of patent claims in U.S. patent applications. The actual mechanics of assembling both basic and complex claims are covered in-depth from simple mechanical cases to complex chemical and pharmaceutical cases. The emphasis is on the how-to of claim drafting, rather than on the history and theory of claiming [This is true but, in focusing on the how-to, the author subtly incorporates the theory, or at least enough of it to inform the reader the answer to the question why the how-to teaches one technique rather than another]. It contains multiple examples for all types of claims which a practitioner is likely to draft, and provides an easy reference for the drafting of particular types of claims. The Essentials of Patent Claim Drafting is written primarily for novice patent attorneys and patent agents, as well as law students and those studying for the Patent Bar Exam ..."
This is the latest in a number of simple, unpretentious and quite robust texts from OUP's New York office that do what they say on the cover. The IPKat has been building up a useful collection them, even though Merpel thinks the covers are so boring and look dreadful when reproduced on this weblog. For those readers who need a clear framework within which to grasp the essentials of US patent claim drafting without being blinded by legal science and the rampant cancer of never-ending citations, this book has much to commend it.

Bibliographic dataxi + 206 pages. Paperback. ISBN 978-0-19-985635-0. Rupture factor: low. UK price £80. Web page here.

Intellectual Property Strategies for the 21st Century Corporation: A Shift in Strategic and Financial Management, edited by Lanning G. Bryer, Scott J. Lebson and Matthew D. Asbell, is the first of a pair of books from the same stable and with the same pedigree, the second of which was actually reviewed first (see post here). Lest it be thought that the reviewing of these two tomes in reverse order was the result of some prank or perversity on the part of this weblog, it should be explained that responsibility must be laid at the feet of United States -- a remarkable civilisation which can send men to the Moon and direct its weaponry with pinpoint accuracy at tiny targets but which had some difficulties in landing Intellectual Property Strategies for the 21st Century Corporation: A Shift in Strategic and Financial Management within convenient reviewing distance of this blogger's semi-detached house in North West London.

Anyway, this trio of Ladas & Parry IP enthusiasts has put together a more than passable, indeed enjoyable and readable, collection of essays. As their publisher states:
"The world has changed significantly in the past decade, resulting in new behavior and practice related to the ownership and management of intellectual property [Not half! Remember the days before trolls, the purchase of keywords, search engine optimisation, green, patents, peer-to-peer file-sharing, open innovation ... ]. This book helps executives, attorneys, accountants, managers, owners, and others understand the legal, technological, economic, and cultural changes that have affected IP ownership and management. It provides case studies, practical examples and advice from seasoned and enduring professionals who have adopted new and streamlined methods and practices whether as in-house or outside counsel, or service providers".
With one eye on continued and accelerating technological change, and the other on the roller-coaster ride that takes us from recession to not-quite-a-recovery and back to recession again, the team compiling this book has made it both relevant and contemporary. This will call for updating at regular intervals, for sure, so read it while it's still current!

Bibliographical data: Hardback, xiii + 322 pages, ISBN: 978-0-470-60175-4. Rupture factor: moderate. UK price £85; Eurozone price 100 euro. Web page here.
Some recent publications Some recent publications Reviewed by Jeremy on Tuesday, December 27, 2011 Rating: 5


  1. I always steer clear of IP firms promoting their 'IP strategy' services by use of a chess image. It's hardly original and if all they can offer is the 'same old thing' then they have nothing to offer a commercial enterprise.

    As for the image used on the cover of this book, if you are at the stage of trying to get your king safe from the centre of the chess board, then your IP strategy has clear problems.

    I have no comment on the book itself as I have not read it!

  2. Well, if that's not judging a book by its cover, I don't know what is. Perhaps that explains the commenter's desire to remain anonymous. A single chess piece right in the middle of the board may have reason enough to be so confident.


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