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Electronic and Software Patents: Law and Practice, Third Edition

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Co-published with AIPLA

A focused, practical reference designed to help practitioners draft, prosecute, and manage a strong portfolio of electronic and technology patents

Main Volume Information

Electronic and Software Patents: Law and Practice, Third Edition is a strategy guide that helps practitioners deal with today’s lightning-paced technological developments, changes in USPTO policy, and pivotal court rulings. In this step-by-step guide, 29 experts—handpicked for their experience with this challenging specialty—provide perspectives and tactics, including:

  • Guidance on tough decisions such as whether to seek patent protection at all; how to search for and evaluate prior art; how to use trade secret and copyright law in conjunction with patent strategy; and how to draft claims for broad yet distinct interpretation
  • Succinct, useful lessons on preparing computer-related patent applications under Alappat, its progeny, and the USPTO’s examination guidelines
  • Compelling insights on drafting with the appropriate scope—and the unique, software-related aspects of the best-mode, enablement, and written-description requirements of Section 112
  • Candid practice “tips and traps” for each step of the patent prosecution process
  • International survey of the statutes, regulations, and case law of more than 40 nations—plus basic global principles of patentability
  • Eight representative sample patents, a timesaving practice checklist, a case table, and an exhaustive topic index

The new Electronic and Software Patents: Law and Practice, Third Edition, co-published with the American Intellectual Property Law Association, also includes:

  • Guidance for writing specifications in view of Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co.
  • Analysis of the Federal Circuit’s application of the Supreme Court’s decision in Bilski to Research Corporation Technologies, Inc. v. Microsoft Corporation.
  • Insights for drafting claims in view of Cybersource Corp. v. Retail Decisions, Inc.
  • Tips for writing preambles that do not limit when the claim is interpreted
  • Pointers for creating the best possible patent application

Ways to expedite the patent examination process also are provided, as are suggestions for maximizing success with the USPTO using (1) pre-first action interview, (2) first action interview program, and (3) pre-appeal brief review request. The treatise also gives strategies for accelerating the issuance of a patent via the Patent Prosecution Highway and contains a comprehensive list of databases for searching patents, including U.S. and foreign government databases, commercial patent databases, non-patent literature databases, and internet search engines. 

2011/1,232 pp. Hardcover/ISBN 9781570189753/Order #1975

 

Steven W. Lundberg, Stephen C. Durant, and Ann M. McCrackin, Editors-in-Chief

American Intellectual Property Law Association