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Electronic and Software Patents: Law and Practice, Third Edition, with 2013 Cumulative Supplement


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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, co-published with the American Intellectual Property Law Association, is a step-by-step strategy guide that helps practitioners deal with today's lightning-paced technological developments, changes in USPTO policy, and pivotal court rulings.

Practitioners handpicked for their experience 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; lessons on preparing computer-related patent applications under Alappat, its progeny, and the USPTO's examination guidelines; 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; and candid practice "tips and traps" for each step of the patent prosecution process. The Third Edition also offers an international survey of the statutes, regulations, and case law of more than 40 nations, plus basic global principles of patentability; representative sample patents; a time-saving practice checklist; a case table; and an exhaustive topic index.

The Third Edition of Electronic and Software Patents: Law and Practice, co-published with the American Intellectual Property Law Association, 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; and pointers for creating the best possible patent application.

Supplement Information  

The new 2013 Supplement offers:

  • Analysis of the Federal Circuit Court of Appeals’ highly divided opinions with respect to computer-implemented inventions in CLS Bank International v. Alice Corp. 
  • Tips for drafting the specification in view of recent decisions on enablement, best mode and written description requirements
  • Examples of terminology that invokes and terminology that avoids 35 U.S.C. §112, Paragraph 6
  • Practical advice for preissuance third-party submissions, including strategies for challenging a competitor’s patents and for protecting an owner’s patents
  • Special considerations for design patent protection on a graphical user interface
  • Guidance on subject matter eligibility and the definition of abstractness from the Federal Circuit’s decision in Ultramercial, LLC v. Hulu, LLC and WildTangent v. Ultramercial, LLC 

Main Volume Information

2011/1,232 pp. Hardcover/Order #9287P

Supplement Information

2013/386 pp. Softcover/ISBN 978-1-61746-287-0/Order #2287

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About the Editors-in-Chief
Steven W. Lundberg is a shareholder in Schwegman Lundberg & Woessner, P.A., Minneapolis, MN.
Stephen C. Durant is a shareholder in Schwegman Lundberg & Woessner, P.A., San Jose, CA.

Ann M. McCrackin is Of Counsel for Schwegman Lundberg & Woessner, P.A., and President, Black Hills IP, Minneapolis, MN.

American Intellectual Property Law Association  

Supplement Information

Steven W. LundbergStephen C. Durant, and Ann M. McCrackin, Editors-in-Chief; American Intellectual Property Law Association