Book Review: “Drafting Patents for Litigation and Licensing”

Reproduced by permission. ©2009 Colorado Bar Association,                                   

38 The Colorado Lawyer 76 (December 2009). All rights reserved. 


Book Reviews




Drafting Patents for Litigation and Licensing


By ABA Section of Intellectual Property Law, Bradley C. Wright, ed.

776 pp.; $325

BNA Books, 2008

P.O. Box 7814, Edison, NJ 08818-7814

(800) 960-1220l;


 Reviewed by William F. Vobach

   William F. Vobach is a patent attorney and a partner with the intellectual property firm of Swanson and Bratschun in Little­ton. He is co-editor of the Intellectual Property and Technology Law section of The Colorado Lawyer and a contributing author on “Patent Law” in the CBA’s The Practitioner’s Guide to Colo­rado Business Organizations—(303)268-0066,



    Drafting Patents for Litigation and Licensing is an excellent book for anyone involved in the practice of writing patent applications, preparing patent non-infringement and invalidity opinions, or liti­gating patents. It will be less helpful to business attorneys who are not actively involved in counseling clients about patent law. How­ever, for those attorneys who already have a general understanding of patent law and desire to learn more, this book will serve as a good reference.

      Although patent attorneys are aware of the dichotomy between patent preparation and patent enforcement, not all attorneys might recognize a dichotomy exists. Although a patent application typi­cally costs an inventor several thousands of dollars in attorney fees to prepare, millions of dollars typically will be spent when the patent is enforced. Thus, a significantly greater amount of money goes into enforcing an issued patent during litigation as compared to preparing the initial patent application. It therefore benefits all patent attorneys to be aware of the pitfalls that confront an attor­ney preparing a patent application. For example, it benefits not on­ly those attorneys preparing patent applications so as to avoid these pitfalls, but also patent litigators looking for new arguments to at­tack an asserted patent.

      This book focuses primarily on the preparation of patent appli­cations and the pitfalls that can confront a patent attorney during the application process. In the first chapter, the current state of the law of claim construction is discussed. Then, a very useful chapter discusses the problems that can occur when drafting a patent ap­plication. The next chapter draws on the lessons learned from claim construction cases to propose a process that the attorney can employ when preparing a new patent application. I found these first three chapters of the book to be an excellent refresher on the recent developments and trends in patent law. Moreover, I have continued to refer back to them while I have prepared opinions or drafted patent applications.

     The next third of the book deals with technical areas of patent law and the issues that are unique to each area. There are chapters focusing on mechanical patents; electrical patents; chemical and pharmaceutical patents; biotechnology patents; software, e-com­merce, Internet, and business method patents; and design patents. The chapters are authored by specialists in their respective area of patent law and therefore are well tailored to address issues that con­front practitioners in each technical specialty area. The chapter on design patents is one of the better treatments of this area of the law that I have seen.

     The third section of the book discusses other topics of interest to patent attorneys, such as continuation practice, drafting patent applications with a view toward Europe, and combining patent prosecution with other forms of representation. The subject mat­ter in these chapters, including the discussion about a firm serving as both opinion counsel and litigation counsel, is particularly well presented. Among the authors is David Hricik, who is one of the leading scholars on ethical issues confronting patent attorneys.

     Due to the frequency with which changes occur in patent law, there have already been some significant changes in the law that will have to be updated when the book is supplemented. However, there is no avoiding this issue in books of this nature and I would not put off ordering the book until a supplement is released. Even without a supplement, the book will be valuable for many years to come. 

      I can highly recommend this book to all patent practitioners—both patent prosecutors and patent litigators alike. The authors se­lected to write each chapter clearly know their subjects and do an excellent job of presenting the material. The book is well crafted to assist those in the practice of drafting, litigating, or licensing patents to assist their clients in assessing the strengths and weak­nesses of a patent.


Review of Legal Resources is published to apprise attorneys of books and other resources that may be of interest to them. Readers wishing to make review suggestions, provide review copies, or write reviews should contact Leona Martínez at For a list of titles available for review at press time, see the notice on page 124 entitled “Read a book. Write a review.”

Readers who have questions about any reviewed material should contact the reviewer. Please contact the publisher to obtain a copy of the book.

CBA members can purchase any ABA publication at a 20 percent discount through the CBA’s Department of Law Practice Management (LPM). Some materials may be available for checkout through the LPM Lending Library. For more information about LPM purchases and the LPM Lending Library, contact Michelle Gersic at (303) 824-5342, (800) 332-6736, or


 The Colorado Lawyer | December 2009 | Vol. 38, No. 12 






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