Best Book for Learning Patent Law Practice?

A skilled and motivated paralegal or assistant can more than double the effectiveness of a patent prosecution office. A Patently-O reader and new prosecution paralegal recently submitted the following question:

Hi, I’m currently working as a Paralegal in an Intellectual Property in-house legal department. Can you please tell me what will be the best book to learn patent prosecution from start to finish? I want to know dates, categories, subject matter (i.e., issued, published, granted and so forth).

Suggestions for our reader? Are there particular conferences or workshops best suited for paralegals and assistants?

22 thoughts on “Best Book for Learning Patent Law Practice?

  1. I have done my M.Sc in organic chemistry & I would like to switch into IPR patent division.If somebody finds vacancy in law firm or pharmaceutical industry please let me know.
    Right now I am working in VVF oleochemical ltd in R&D department.
    For contact my email is c_gaidhani@rediffmail.com

  2. Thanks for some many helpful comments and tips. Can anyone share the experience about preparing the USPTO bar exam? Is there any complete preparation package to use? I just got my Ph.D. in engineering. I plan to do patent stuff in the future. Thanks a lot and have a great day!

  3. I have gotten rave reviews from my new book “Invention Analysis and Claiming: A Patent Lawyer’s Guide” published by the ABA and available online at Amazon, etc. The initial focus of the book is how to analyze the inventor’s disclosure to identify the inventive concept and its fallback features. The book then goes on to explain how one can draft claims that capture the inventive concept. The table of contents and the book’s introduction are available at the ABA online bookstore page for the book: link to abanet.org

    Also there is an interview with me about the book taken from Intellectual Property Lawcast.

    Ron Slusky

  4. blunderphobe@yahoo.com

    On Jul 02, 2007 (at 05:34 PM) I posted some questions to this group. Can anyone suggest a few books that would answer them? It seems to me that most books – and most patent attorneys – practice only the “standard” situation, and are of little help when anything unique happens. Neither authors nor attorneys are willing to address individual cases that don’t fall neatly into the standard situation, even when someone is willing to pay. There seems to be a “bulk process” mentality permeating the patent-law community.

    I would still be grateful if anyone can suggest any books, papers, web sites, or attorneys that can help me get my questions answered. My question was whether a state-judge’s determination that an employment contract is invalid (on state law grounds) can invalidate a patent assignment contained in that employment contract. The most helpful comment posted on this site was from KCB, on July 18: “I think Congress should pre-empt all state law codes governing the assignment of inventor rights to a company by an individual.”

    Here is a link to my full question: link to patentlyo.com

  5. For Life Sciences related patent law, go to the Westlaw site if you have a subscription. Go to the Biotechlaw database therein, and access the Table of Contents. Read a chapter on each topic, for example, infringement, patent drafting, etc. It will also allow you to see how the law in that area developed.

  6. “Patent it yourself” is very good, gives lots of specific examples, and is a great tool for learning – even if you don’t want to “patent it yourself.”

  7. Hands down the best concise introduction to patent law is Schwarz’s Patent Law & Practice. This is also the best intro for patent litigators since it is what the district court judges are issued by the Judicial Conference.

  8. Of course, I think my book Patent Application Practice, published by West and regularly updated, to be the best one volume book to introduce one to the topic, and to guide them through all the many problems that can arise. Jim Hawes

  9. Related question- does anyone have suggestions for a patent law book for financial analysts? I’m in a corporate finance group supporting our patent attorneys from a finance perspective.

    Thanks!

  10. Patent It Yourself by David R. Pressman is absolutely the best prime I have seen to learn patent prosecution. It will be more than sufficient for a paralegal and is terrific for first year associates to learn the basics.

  11. We are the founders of the Paralegal SuperConferences held throughout the U.S. We offer workshops on Intellectual Property including patents, trademarks and copyrights taught by practicing attorneys, paralegals and educators. We also hold conferences specifically for in-house paralegals. Come and join us!

  12. For beginners, Patent It Yourself (www.nolo.com) is probably as good a place as any to start. From there you can build to other books such as Sheldon’s or Schwartz’s. I would also recommend the PLI Patent Bootcamp course and the PLI Advanced Prosecution course.

  13. Patent Law and Practice 4th ed. by Herbert Schwartz covers the basics without too great of detail. It’s very easy to read and a good quick reference material.

  14. I am a legal assistant working with an IP attorney in a bio-tech company. I can’t recommend a book but I would suggest taking advantage of all the free tutorials and recorded web seminars that are available on the USPTO’s website especially if you do any on-line filing.

  15. Steve Shear does an excellent set of workshops that focus on the nitty-gritty aspects of patent law. His company is Silicon Valley Seminars. link to patentseminars.com The workbooks have excellent examples of all the forms, templates, letters, etc. that you will see during prosecution. They are excellent references for what a type of letter or form should look like.

    Many of his seminars are directed toward paralegals and newbie attorneys/agents.

  16. I send my paralegals to a paralegal seminar by PLI (i believe). It is Paralegal specific, which is nice.

    There are a lot of books out there, but ultimately just read the MPEP.

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