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Tips for Effective Patent Application Drafting and Patent Prosecution

BY Phillip Articola
November 30, 2004

By now, patent attorneys who do a fair amount of patent application drafting and patent prosecution should be well versed in the fairly recent PTO rule changes dealing with various aspects of patent prosecution. Rather than discuss those rule changes, this article discusses 10 tips for better patent application drafting and patent prosecution. The first two tips deal with patent application drafting, the next four tips deal with prosecution of a patent application, the next three tips deal with things to do after receiving a notice of allowance, and the last tip deals with all stages of patent prosecution.

Tip #1: Draft Claims of Different Scope in a Patent Application

It goes without saying that a patent application should have different sets of claims of varying scope. Also, a patent application should have, if at all possible, at least one set of method claims, at least one set of non-”means-plus-function” apparatus claims, and at least one set of “means-plus-function” claims. That way, in the event that one type of claim (eg, method claims) is given a broader scope of protection than another type of claim (eg, apparatus claims) by the courts in the year 2013, you will not be ruing the day that you did not include such claims in the patent that you wrote and prosecuted for a client many years earlier.

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