Strategic Patenting is a comprehensive guide to patenting, from drafting and prosecution to valuation and licensing. Unlike standard patent law texts that don't teach patent drafting, or drafting guide books that teach only the basic mechanics, this book reveals the strategic consideration underlying patent practice. Among other things, the book:
Explains the financial aspects of patenting, (e. g. why costs are so high; why a drafter should use fewer independent claims; why divisionals can be great for building a patent attorney's business, but are terrible for applicants; how to choose domestic and foreign filing strategies);
Explains how to search patentability, using paid and free resources, why, when and how to use keyword and classification searching, how to get the patent offices to conduct the search early on, and how to set up ongoing searches;
Guides the reader to draft claims that really have value, (e. g. using overlapping targets, market-centered claiming, and using creative claiming to secure broad protection in crowded markets);
Guides the reader in determining how to build a patent portfolio, both to maximize the protection on an applicant's own invention, and to lay a wet blanket over further developments of the competition;
Explains how to deal with rejections both from technical and humanistic standpoints; and discusses when, how, and why applicants should file continuations, divisionals, continuations-in-part, and appeals;
Includes information that a practicing patent attorney or agent needs to know to run a practice, including office procedures, strategic considerations for licensing, and valuation of patents;
Includes numerous appendices, such as a patent opinion letter, due diligence checklist for transferring IP rights, sample forms for assignments and licenses, and a sample commercialization agreement.
The book is a must-read for new and experienced practicing practitioners, inventors, and business management anyone involved with patents.