Sunday, August 8, 2010

Patent pros resources: "Strategic Patenting"

For those of you new to patent drafting and prosecution, here's a new online resource: "Strategic Patenting" by Fish & Associates. I'd consider this to be a high level overview. It has chapters on claim drafting, specification drafting, office actions, infringement, provisionals, and PCT, to name a few.

You should be aware, however that at least some of the information is dated (e.g., the book says 101 rejections are unusual, and mentions the PTO's disclosure document program was discontinued a few years ago). And some of the topics may be oversimplified, for example, the discussion of objections and rejections in the section on 112 seems to suggest these two are the same when there are important differences.

Treat this book as a basic overview rather than a substitute for a patent prosecution treatise by a legal publisher, (e.g, Patent Prosecution by Donner or Patent Application Practice by Hawes). Finally, a disclaimer: this post is not an endorsement, simply a pointer to a resource.


  1. Woah. That book is amazing. I started reading the chapter on responding to Office Actions and it just kept going and going!

  2. The book contains this quote:

    "The patent office can also issue § 101 rejections on the grounds that the subject matter is not patentable, but such rejections are rare. Methods of treating humans are patentable, methods of doing business are patentable, and software is patentable{fn}J.E.M. Ag Supply v. Pioneer Hi-Bred Int'l, 534 U.S. 124, 130 (U.S. 2001), citing Diamond v. Chakrabarty, 447 U.S. 303, 308 (U.S., 1980).{/fn}. It is almost always possible to claim an invention by properly reciting the subject matter."

    Was it written before Bilski? 101 non-statutory subject matter rejections are pretty common in my practice (software).

  3. >Was it written before Bilski?

    Dunno, but it sounds like it. It's also true that the types of rejections you see varies according to technology area. For example, written description and enablement are more common in biotech than in computers and electronics. And you find restriction requirements more in chemical practice.

  4. The book talks about the USPTO's disclosure document program (Chapter 9). I thought that this program was disbanded a few years ago.

    If that's true, Karen, I suggest you reconsider how you recommend this book. If instead I'm wrong, I'll go away. (Sorry.)

  5. I haven't finished reading the chapter, but I've found other dubious statements. For example, the book states that objections and rejections are basically the same and can be treated the same. I understand what he means by that (in practice), but the two things are fundamentally different and it is important to know why they are different and how to handle them differently. For examples, objections may be petitioned while rejections are appealed. The standards for properly objecting and rejecting are entirely different, too. It's naive to think that they are essentially the same thing.

    So I agree that anonymous that Karen might want to qualify her recommendation of the book.

  6. >suggest you reconsider how you recommend this

    Done. Thanks.