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I am looking for guidance on preparing an effective draft for filing a patent and some examples and case studies that discusses how to effectively respond to claims…

Are there any specific resources that exist to gain more knowledge on drafting an effective patent application and examples of responding to claims. Appreciate your response

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  • I’m a retired patent agent. After I spent $3k on a 40 CD set to learn to pass the USPTO patent bar I spent about $1k on books that I studied after passing. I followed twists and turns in case law via the blog PatentlyO and joined a professional group for registered patent practitioners with a good online forum that helped me tremendously. I didn’t mess up my first two applications but could have without a little luck and help. Sone inventors have put in the hard work to learn this nuanced, sometimes illogical and ever changing field and succeeded. I will post a list of books & blogs later.
    – George White
    Feb 18, 2023 at 17:28
  • What do you mean “respond to claims”? Claims are something you generate not respond to.
    – George White
    Feb 18, 2023 at 17:44

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This is a subtle, deep, not always logical and ever changing field.

If you decide to tackle it in your own, the standard, and good, answer is

Patent It Yourself: Your Step-by-Step Guide to Filing at the U.S. Patent Office

The author maintains a web site with errata and updates to law and regulations. There is quite a bit of detailed information in this book that has evolved over many editions.

Next I would look for an inventors club in your area. They often have good speakers and it’s valuable to exchange ideas with other inventors.

If the cost of getting help from a professional is really out of reach the USPTO has a pro bono program that mught be active in your location.

You mention claims. They are very hard to write well. I recommend

Invention Analysis and Claiming: A Patent Lawyer's Guide.

However the clever claiming he teaches might not be as effective as it was when it was written.

These books are under a hundred each. The other two or three books I would list are each over $400.

The person drafting the application writes the initial claims. It is hard. Maybe harder is responding after you get an “all claims rejected” office action.

A good resource is the blog Found Persuasive. I’m not sure it has been updated lately. The most significant patent blog overall is PatentlyO but don’t get caught up by the arcane and surprisingly insulting comments patent attorneys make to each other in the comments areas.

If your invention is chemical, biological or software your chances of success drop considerably.

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  • I added links to the books for convenience. I also removed the prices as at least the second was quite out of date.
    – Eric S
    Feb 19, 2023 at 2:43
  • Thanks - I just added info about the ballpark of prices and that it went way up from there.
    – George White
    Feb 19, 2023 at 3:43
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I am not a lawyer. I do, however have a lot of patents. My one and only piece of advice is to hire a patent lawyer or agent. There are books available and it is possible to draft and prosecute your own patent. That said, even if you manage to do so, I can almost guarantee it will be weaker and less valuable than if you work with an attorney.

So the question to ask yourself is do you believe you can make a lot of money off this invention? If so, the cost of working with a patent attorney will be marginal compared to the potential profits. If you don't believe that you'll make enough money off the patent to cover the cost of working with a professional, then don't bother getting a patent.

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