A guide through the minefield of court decisions that have systematically eroded the scope and validity of patents

Main Volume Information

Drafting Patents for Litigation and Licensing is the first book to help practitioners draft the broadest possible patent that can sustain a validity challenge by synthesizing and applying lessons from the case law. Nearly every day, the courts provide patent practitioners with practical guidance on how to best comply with the requirements of the patent statute. Drafting Patents for Litigation and Licensing provides an organized review of these lessons and guidance for applying them. This treatise not only benefits the patent practitioner, but it also aids and advances the patent system: better, stronger patent applications can result in higher-quality patents of value both to their owners and to the public.

Drafting Patents for Litigation and Licensing allows you to prepare the strongest patents possible. The book contains in-depth discussions on:

• Pitfalls in claim drafting 
• Dangers of means-plus-function clauses in claims 
• Strategies to target direct infringers 
• Recent trends regarding the scope of enablement 
• Instructions on how to “Festo-Proof” a patent application 
• Pitfalls with provisional patent applications 
• Strategies for continued prosecution of patents 
• Statutory subject matter problems affecting software, business method, and biotechnology patents 
• Creative claim drafting to avoid common problems in chemical and pharmaceutical patents 
• Strategies for maximizing design patent protection 

Drafting Patents for Litigation and Licensing focuses on real-life examples taken from court decisions, especially those from the U.S. Court of Appeals for the Federal Circuit, in which patents are interpreted, enforced, or licensed—too often to the detriment of the patent owner. Lessons gleaned from these decisions are broken out by principle and area of technology, providing detailed advice for drafting strong patents, avoiding problems, and maximizing leverage.

Supplement Information  

The 2012 Cumulative Supplement to Drafting Patents for Litigation and Licensing provides significant updates and analysis of the latest legislation and cases, including:

• The Leahy-Smith America Invents Act, impacting almost all areas of patent drafting, including earlier and more frequent patent filings due to the transition to a "first-inventor-to-file" regime
• Mayo Collaborative Services v. Prometheus Laboratories, involving the patentability of medical diagnostic tests
• Bilski v. Kappos, holding out the possibility that so-called "business method" inventions can be patented as long as they are not an abstract idea
• Stanford v. Roche, showing that an improperly drafted agreement between a university and one of its researchers divested the university of its patent rights
• Blackboard, Inc. v. Desire2Learn Inc., where the Federal Circuit held that patent applicants may not support a means-plus-function clause with the mere disclosure of "a black box that performs a recited function"
• The Federal Circuit’s decisions in Muniauction Inc. v. Thomson Corp., Golden Hour Data Systems v. emsCharts Inc., and Akamai Technologies, Inc. v. Limelight Networks, focusing attention on drafting method claims in such a way that the method steps are performed solely by a single entity
•  The en bancdecision in Egyptian Goddess v. Swisa, completely overhauling the test for infringement of design patents
• Quanta Computer v. LG Electronics, which substantially expanded the patent exhaustion doctrine, and also raised questions about the rights of patent owners to control downstream uses of patented components
•  The en banc decision in Ariad Pharmaceutical v. Eli Lilly, leading to the possibility that broad genus claims may be enabled, but not supported, by the written description of the patent

Main Volume Information

2008/776 pp. Hardcover/Order #9049P

Supplement Information

2012/404 pp. Softcover/ISBN 9781617460494/Order #2049

Main Volume Information

About the Editor-in-Chief
Bradley C. Wright is a senior partner at Banner & Witcoff, Ltd., Washington, DC. He concentrates his practice in patent prosecution, litigation, and counseling, especially in the electrical and computer-related areas, including internet and e-commerce. 

Contributing Authors

ABA Section of Intellectual Property Law.

Bradley C. Wright, Editor-in-Chief

Contributing Authors

ABA Section of Intellectual Property Law.

Main Volume Information

• Detailed Table of Contents
• Summary Table of Contents
• Preface
• Authors

Supplement Information  

• Detailed Table of Contents
• Summary Table of Contents
• Preface
• Authors

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