Strategic Patenting

About the Book

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.

About the Author

Robert D. Fish, Esq. has been a patent attorney for 17 years, and is currently chair of the Intellectual Property and Technology Group at the general practice law firm of Rutan & Tucker, LLP in Costa Mesa, CA. He has attracted a world-class clientele in a wide array of technologies, from garage inventors to multi-billion dollar corporations and universities. Several foreign patent offices engage Mr. Fish as their U.S. patent associate.

Mr. Fish is currently overseeing more than a thousand active patent matters and numerous trademark matters, including extensive foreign filings. He has also been involved in several patent enforcement programs, which include in-bound and out-bound licensing, arbitration, and litigation. Mr. Fish has litigated in state and federal courts throughout the United States, (including California, Pennsylvania, Massachusetts, Nevada, and Delaware) and has overseen cases in several European countries. Mr. Fish has successfully appealed several matters before the PTO, TTAB, and the Federal Circuit. He has acted as both an arbitrator and a mediator.

Mr. Fish is a master at simplifying complex matters. His Cost-Effective Patenting and Strategic Patenting books demystify what so often seems like a black art, providing simple explanations and a logical approach to the patent process. In addition, Mr. Fish is perfectly willing to share his secrets. Unlike others who try to hide behind the obscurity of the profession, Mr. Fish is perfectly willing to explain patent drafting, prosecution, valuation, licensing, and even office practice in great detail. That approach is incredibly valuable for beginning patent practitioners, inventors, and business people. Still further, Mr. Fish is completely open about the costs of patent prosecution, teaching others how to achieve the very best protection without busting the budget.