book summary

This book on patent application drafting and prosecution has its all-inclusive “practice facilitation” features presented in reader-friendly text boxes, diagrams, tables, and flowcharts, setting the stage for your “one-person show.” Indeed, it provides tons of insightful information such as: 

• IBM patent attorneys’ teachings on patent basics, patentability, claims, and patent strategy.
• A patent infringeability tutorial and presentation of good improvement patents, new-use-for-old-invention patents, problem-solving patents, and fascinating business success stories. 
• An updated version* of the “application specification template” I used for successful application drafting for IBM, other companies, and myself, coupled with my time-tested application preparation step chart.** 
• Actionable, detailed description with examples on how to write each part in the specification template including claims, plus self-making of the “centerpiece:” patent drawings, providing many of which is the easiest way to make better and stronger patents. 
• Many exemplary patent applications I drafted based on the template plus drawings, leading to issued patents, some of which were granted as filed.
• My examples of “how to spot invention and write adequate disclosure” learned while at IBM, leading to several granted patents and acquisitions by corporations besides IBM. 
• My prior art search findings for a hypothetical invention using free online worldwide search tools, by keyword and patent classification (CPC), plus search effectiveness measuring tools.
• Many tips from patent experts for drafting a great application, demonstrated with a practice example for a hypothetical invention.
• Advanced claim and application drafting strategy based on remarkable patent experts’ teachings to maximize potential licensing income for your patents.
• The U.S. patent process in self-explanatory flowcharts, the PTO e-filer registration guidelines and log-in procedures, and demo of an exemplary application e-filing step-by-step including both EFS-Web and Patent Center screenshots, and “how-to” access private PAIR (app status) and File Image Wrapper (prosecution history). (Note that the latter is also accessible at the USPTO Patent Center by the public.)
• A presentation of patent reissue basics and a reissue patent application process I initiated and completed to broaden my patented claims post-grant, leading to the grant of my “reissue patent” as filed.
• A fascinating provisional patent application (PPA) document generated by software, with inputs from a questionnaire I completed based on my “belt” invention as an example.
• Prosecution overview, practical considerations, strategies, examiner incentives, and top tips, along with an updated office action response (OAR) template, to facilitate the negotiation with the PTO for a patent.
• My selected winning prosecution case studies demonstrating how a do-it-yourselfer can successfully prosecute patent applications.
• Tips for performing patent tasks such as IDS filing, patent assignment, patent docketing, patent maintenance fee payment, business entity creation for keeping patent ownership, and patent enforcement. 

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* It is an actual shortcut and lends itself to avoiding “applicant admitted prior art” (“AAPA”) and narrowing patent protection. In addition, this template contains timely updates to template I used before, featuring: 

- No more use of the word “invention” throughout the specification. 

- No attempt to describe the prior art or the need for the invention in the Background section.

- No re-statement of dependent claims in the Brief Summary section.

- No recommendation for inclusion of means-plus-function claim.

- Inclusion of multi-type claims: apparatus claim, system claim, and method claim. 

- Inclusion in Brief Summary of a simple re-statement of an independent claim, such as “apparatus” claim, in plain language, with the mention of system and method claims performing functions of the apparatus.

- Use of a generic preamble in each of the above independent claims when possible.

- Inclusion of standard non-software high-tech boilerplate (parts omittable for non-high-tech applications).

** My time-tested step chart for preparing a patent application, which got a thumbs-up from Larry M. Goldstein, a well-known patent attorney and author of many books on patent quality, can make patent drafting pretty much “a piece of cake” for anyone (novice or veteran). This preparation procedure, coupled with the said template, has been used successfully for patenting inventions for IBM, other companies, and myself. Just remember the adage: “What’s good for IBM is good enough for you and me.”