Customer Reviews

How to Write a Patent Application

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This is an outstanding book that fills a nice spot for those people who want to go beyond David Pressmans also nice book "Patent It Yourself".
This book essentially laid the groundwork for me, and I have personally reccomended it over the years to many other people I know who are just starting their careers, and they have all found it a very excellent and useful book as well. One possible way to learn patent drafting on your own is to start with Pressmans book, move up to this book, and then round out your edcuation with Landis on Patent Claim Drafting. When I was a patent examiner, I used to like helping pro-se inventors doing their own applications, often rather uninformedly, by recommending the above progression of books to read. As I said before, this book is a real wonder, and, for independent inventors, given the amount of money you might have to otherwise pay an agent or attorney to draft your application, it is well worth purchasing. And even if you do have an agent or attorney prosecute your first application, it is a good book to follow the process along with, and then hopefully in the near future, you will be writing them yourself. And if you want to be a patent agent or attorney doing prosecution, this book, Landis, the MPEP, and a dictionary are the only books you need on your shelf. (By the way, I have never met or talked to Mr. Sheldon, I just appreciate it when people fill a void with a very nice book)

This book is intended for beginning and serious patent practitioners as a handbook for patent application draftsmanship. It is contrasted with books such as "Patent It Yourself" by David Pressman in that the latter appears to be directed toward novice pro se applicants. Much information contained in "How to Write a Patent Application," by Jeffrey Sheldon, may be used as study material for the registration examination for patent attorneys and agents (i.e., the patent bar examination). I found it to be an excellent companion to the "Manual of Patent Examining Procedure" (MPEP) which is published by the United States Patent and Trademark Office.

This is an excellent guide for somebody who wants to learn about drafting patent specification. This book is for patent professionals, unlike "Patent It Youself" by David Pressman. However, for a patent agent, there are other books that I recommend to follow after reading this book, the books including "Landis on Mechanics of Claim Drafting," "Patent Prosecution --Irah H. Donner," "Software Patents--Gregory A. Stobbs," and in last the online MPEP from USPTO web-site.

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Although the book was originally written in 1992, it is updated yearly to accomodate changes in the law.

This book is packed with excellent information for both patent professionals (attorneys and agents) as well as inventors serious about writing their own patents. How to Write a Patent Application is a highly practical guide for patent professionals: it is easy to read, well indexed, and written in plain English. It's 1300 pages covers almost all aspects of patent writing in great detail such as claims drafting, specification writing, drawing requirements, and application filing. He provides ample practical discussion of different types technology areas such as electronics, chemical, biotechnology, software and business method patent applications. He also provides comprehensive coverage of design patents.

In addition, Sheldon covers areas that you would not necessarily expect such as working with the inventor. Here he does a terrific job of providing guidelines for interviewing the inventor, guidelines for avoiding inequitable conduct, and sample check lists for invention evaluation.

There are a few areas he either does not cover or does not cover in much depth. I wish he would have provided strategies for answering Office Actions, especially §103(a) obviousness rejections. He also only briefly touches on novelty searching. In all fairness, this is not part of how to write a patent application which is the title of the book, but both of these are important, and prevents the book from being an otherwise comprehensive guide to prosecuting a patent application.

Being a solo practitioner, this book is like an old friend to me, filled with practical advice, chock full of "dos and don'ts" examples, check lists, and samples. I can't imagine my practice without it. To me this is one of my three essential patent practice books. Here they are in order of importance for me: #1 "Invention Claiming and Analysis: A Patent Lawyer's Guide" by Ron Slusky, #2 this book, How to Write a Patent Application by Jeffery Sheldon, and #3 Faber on Mechanics of Patent Claims Drafting. Ron Slusky's book will make you much better at your craft and is the best book I have found on writing effective claims, identifying the inventive concept, and is hands down the best of the three, Faber (formerly Landis) is gold standard for claims construction, and to me, Sheldon is trusted reference book for day to day patent application practice.