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Preparing and Prosecuting a U.S. Patent Application by Stephen C. Shear Silicon Valley

Preparing and Prosecuting a U.S. Patent Application
A Treatise from Experience
Book I
Steve Shear's Working Guidebook
Drafting Patent Claims

Stephen C. Shear

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Summary

Introduction to Steve Shear’s Working GuideBook

When I began writing my Working GuideBook for Drafting Patent Claims I had to establish its tone. I gave a lot of thought about whether I should approach this subject with the formality of a law school text, as some had suggested or, as others have suggested, with the hands-on informality that has been ever present in my workshops and has always been part of my own personality. I decided to take the latter path for one very important reason. I want you, the users of this Working GuideBook, to approach it as just that, a working guide, much as you would approach one of my workshops. I want you to HEAR AND EXPERIENCE what is being said, not merely read it. I want you to be an ACTIVE PARTICIPANT much like you would be if you were attending one of my workshops.

In establishing the tone of this Working GuideBook I speak mostly in the first person, as I am doing so now, and I speak directly to you, the reader, assuming that you are a patent attorney or patent agent or some other person interested in leaning how to prepare patent claims. At the same time, I often refer to others including, for example, the Inventor(s) and Patent examiner(s).

About the Author

A former United States Patent Examiner (June, 1967 – August, 1969) in the electrical/mechanical arts, Steve Shear has been practicing patent, trademark, copyright and other forms of intellectual property law for over 40 years. During those years he has prepared and prosecuted well over 800 patent applications. Prior to establishing the Law Offices of Stephen C. Shear and thereafter joining the Pritzkau Law Group in Boulder, Colorado, he was a partner at the Palo Alto, California firm of Ware & Freidenrich where he started the first patent group for the firm. Prior to that, Steve was a senior partner at the San Francisco patent law firm of Flehr, Hohbach, Test, Albritton & Herbert. He has also served as an expert witness (Markman expert) in several patent cases.

He is the executive director and founder of Silicon Valley Seminars® (www.patentseminars.com) and has been conducting workshops for patent attorneys and staff and patent seminars for inventors, executives and general attorneys since 1984. These workshops now include a workshop on the Patent Process, one on the Advanced Patent Process (which includes Overcoming USPTO Rejections under 35USC102, 103 and 112, Pre-Litigation Issues and Reexamination and Reissue applications) and a workshop on the PCT. All of these workshops are conducted on-site, in-house and via Silicon Valley Seminars’ TelePatent® telephonic workshops.

In addition, Steve has been conducting his two-day Claim Drafting workshop since 1990, both on-site and in-house. Much of the material, including a number of the exercises from those workshops. have been incorporated into this Working GuideBook. In addition to conducting this Claim Drafting workshop in most of the major patent cities in the U.S., Steve has conducted the very same workshop in Europe and in Israel.

Steve Shear received a B.S. degree (with an emphasis on electrical engineering) from Washington University in St. Louis in 1966 and a J.D. from American University, Washington College of Law in 1969. In addition to all of his other endeavors, Steve has been an Adjunct Professor and Member of the Graduate Faculty at the University of Colorado, School of Engineering and was a co-founder of a number of start-up companies including Colorado Display Technologies, Light Engineering, Phiar Corporation and XenoPur Systems, Inc.

Steve is a painter and sculptor (www.shearstudio.com) and lives with his wife Susan in the foothills of the Santa Catalina mountains just north of Tucson where he is also busy writing poetry and walking.

 

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