Release #4 is now available for Faber on Mechanics of Patent Claim Drafting (7th Edition)
“This work must be included in the library of anyone who considers himself or herself an attorney [in the field].” – The Licensing Journal
A trusted working tool for more than two decades, Faber on Mechanics of Patent Claim Drafting spotlights proven claim drafting practices and techniques that have been firmly established by patent authorities and custom. Faber on Mechanics of Patent Claim Drafting provides full coverage of U.S. Supreme Court and other court decisions critical to claim drafting. It is an indispensable guide for patent specialists and other intellectual property attorneys, corporate counsel, patent agents, patent officials, and inventors. Among the topics covered in the recently updated book are the following:
- Patent eligibility—computer-related claims: Several recent Federal Circuit opinions emphasize that patent claims directed to data processing or pure software can be patent-eligible. Software modifications that improve functioning or capacity of a known system are generally patent-eligible. This applies to improvements in computer functionality or solving technology-based problems, even with conventional generic components when combined in an unconventional manner. It is recommended to disclose and discuss the practical benefits of the claim in the specification. The differences from the art, the technological improvement, and the reasons for this may convert what appears to be known technology into something patent-eligible. See 1:5.5, at note 88.3.
- “Visually negligible”: Words of approximation are not restricted to words like “about,” “approximately,” and “substantially.” The Federal Circuit held that “visually negligible” was definite because the specification provided examples of visually negligible indicators, namely an objective baseline to determine what is visually negligible based on what can be seen by the normal human eye, and neither the examiners nor the experts during prosecution and reexamination had apparent difficulty determining the scope of this term (Sonix Technology Co. v. Publications International, Ltd.). See § 3:19, at note 389.1.
- Claims in continuing applications—claim construction: According to the Federal Circuit, where more than one patent derives from, that is claims priority to, a common parent, construction of the same claim in two or more of those patents should be the same, since they are all based off the same disclosure and specification (Trustees of Columbia University v. Symantic Corp.). See § 5:5, at note 43.1.