Treatise Update – Faber on Mechanics of Patent Claim Drafting (Seventh Edition)

Faber on Mechanics of Patent Claim Drafting spotlights proven claim drafting practices and techniques that have been firmly established by patent authorities and custom. The treatise provides full coverage of U.S. Supreme Court and other court decisions critical to claim drafting. It is an indispensable guide for patent specialists/intellectual property attorneys, corporate counsel, patent agents, patent officials, and inventors.

This new release updates and expands the treatise with practical information and commentary on a variety of issues affecting patent claim drafting. Highlights include:

Chapter 1

  • Abstract ideas: For complete analysis and implications of XY LLC v. Trans Ova Genetics, see §§ 1:4.8 and 1:5.7.
  • Software Inventions: See §§ 1:4.2[A] and 3:29.7 for treatment of Rain Computer, Inc. v. Samsung Electronics America, Inc.

Chapter 2

  • Claiming contrary positions: See new § 2:15 for a discussion of Infinity Computer Products, Inc. v. Oki Data Americas, Inc., and how inconsistent statements by the patentee in the prosecution history could limit the scope of the claim language or render the claims invalid.

Chapter 3

  • Words of approximation: Section 3:19 is updated with a discussion of Par Pharmaceuticals, Inc. v. Hospira, Inc., in which the Federal Circuit said that “about” means approximately and is determined by using a functional approach, avoiding a strict numerical boundary, and confined to what one skilled in the art would consider to be “about” in the current case.
  • Singular and plural elements: § 3:11 discusses the meaning of the phrase “a plurality of.”
  • Means plus function: See new § 3:29.7[A] for a discussion of the implications of claiming elements in terms of function performed rather than physical structure in order to cover a broader range of structures.

Chapter 5

  • Product-by-Process Claims: Section 5:2 looks at Biogen MA Inc. v. EMD Serono, Inc., noting that the Federal Circuit is expanding product by process to cover a method of treatment claim that includes a product-by-process limitation.
  • Design claims: Section 5:4 notes that the patent office is considering whether design protection should extend to digital designs that do not require a display screen or other tangible article to be viewable.

Table of Authorities and Index

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