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AIPLA Practical Patent Prosecution Training for New Lawyers

AIPLA Practical Patent Prosecution Training for New Lawyers. Electrical, Computer & Software Claim Drafting. Rick A. Toering | rtoering@wcsr.com | 703.790.7915 Wednesday, August 25, 2010 | Alexandria, VA. Primary Consideration. Draft Claims that CAN BE INFRINGED Who Infringes Claim?

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AIPLA Practical Patent Prosecution Training for New Lawyers

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  1. AIPLA Practical Patent ProsecutionTraining for New Lawyers Electrical, Computer & Software Claim Drafting Rick A. Toering | rtoering@wcsr.com | 703.790.7915 Wednesday, August 25, 2010 | Alexandria, VA

  2. Primary Consideration Draft Claims that CAN BE INFRINGED • Who Infringes Claim? • Single Infringer vs. Mixed/Joint Infringement • Direct vs. Indirect Infringement • Components vs. End Product • How is Claim Infringed? • Make, Use, Sale, Offer, Import

  3. Other Considerations • Draft Claims that Cover the Invention • Draft Claims that Avoid the Prior Art • Draft Claims with Commercial Significance

  4. Drafting Considerations Draft Claims that Cover the Invention • Identify the Key Aspects of the Invention • Identify Preferred Implementations • Identify Alternate Implementations • Identify Commercial Implementations

  5. Drafting Considerations Draft Claims that Avoid the Prior Art • What problem does the invention overcome? • Which aspect(s) of the invention overcome that problem? • Which aspect(s) of the invention are not found in the prior art?

  6. Drafting Considerations Draft Claims with Commercial Significance • What are the commercial applications? • What are the commercial environments? • What are the commercial components? • Who are the likely competitors? • Ultimately, … WHERE ARE THE $$$?

  7. Claim Strategy Draft Claims with Varying Scope • Broad Claims with Key Features Not in Prior Art • Medium Claims Directed Toward Commercial Environments • Focused Claims Directed Toward Actual Commercial Products

  8. Rick A. ToeringMember/IP rtoering@wcsr.com | 703.790.7915 Tysons Corner, Virginia

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