Bloomberg BNA Announces New Edition of Patent Prosecution

Bloomberg BNA announces the publication of Patent Prosecution: Law, Practice, and Procedure, Eighth Edition, which addresses significant changes in patent law brought by the passage of the Leahy-Smith America Invents Act (AIA), recent court decisions, and statutory amendments. In addition to providing essential analysis of over 45 decisions of the Supreme Court, the Federal Circuit, and the Board of Patent Appeals and Interferences, this treatise also explains prosecution rules from the U.S. Patent and Trademark Office and offers an element-by-element analysis of areas of law that form the basis of common PTO rejections and objections.

The Eighth Edition covers many important cases, including the Supreme Court’s ruling in Mayo Collaborative Services v. Prometheus Laboratories, Inc.,and also discusses PTO guidelines that set forth a new procedure for examining subject matter eligibility in view of this decision. It analyzes the second Supreme Court decision in Hyatt v. Kappos, allowing a patent applicant greater freedom to introduce new evidence to a district court. And it explores the AIA by explaining Patent Office final rules for third parties to submit prior art in pending applications.

Additional highlights include discussions of these recent Federal Circuit decisions:

• Apple, Inc. v. Samsung Electronics Co., Ltd.
• In re Beineke
• Thorner v. Sony Computer Entertainment Inc.
• Sandisk Corp. v. Kingston Technology Co., Inc.
• Falana v. Kent State University
• CLS Bank International v. Alice Corporation Pty. Ltd.
• Plasmart, Inc. v. Kappos
• In re Antor Media Corporation
• Voter Verified, Inc. v. Premier Election Solutions, Inc.
• Cummins-Allison Corp. v. SBM Co., Ltd.
• Ergo Licensing LLC et al. v. Carefusion 303 Inc.
•  In re Youman
• In re Baxter International, Inc.
• Bard Peripheral Vascular, Inc. v. W.L. Gore & Associates, Inc.

An accompanying searchable CD-ROM offers a comprehensive Cumulative Case Digest in HTML format, providing access to an extensive compilation of precedential language. Organized by specific issue, in favor of patentability, it contains excerpts from leading cases through December 31, 2012, and updated forms to reflect changes, with instructions, introduced by the AIA.

The author of Patent Prosecution: Law, Practice, and Procedure, Eighth Edition is Irah H. Donner, a partner in the Intellectual Property department of Stroock & Stroock & Lavan LLP, New York, NY. Mr. Donner concentrates in the counseling, due diligence, claim analysis, and preparation/prosecution of patents, as well as enforcement of intellectual property, with particular emphasis on financial, business method, internet, and computer software/hardware applications. This treatise is available for sale directly from Bloomberg BNA and also is available on the Bloomberg Law legal and business information system.

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