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Electronic and Software Patents: Law and Practice, Third Edition, with 2012 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 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 2012 Supplement offers important updates and also provides discussion on:

  • Inspection of the America Invents Act and its effect on the prior user defense
  • Strategies for writing the specification in view of Mayo Collaborative Services v. Prometheus Laboratories
  • Tips for targeting an application to a desired Technology Center or Art Unit at the USPTO
  • Guidance as to which factors may be considered in determining whether a process claim falls into the “abstract idea” exception
  • Interpretations of Bilski and post-Bilski Federal Circuit cases
  • Review of the decision in Ultramercial LLC v. Hulu, LLC for method claims requiring complex programming to implement an invention
  • Analysis of the outcome in Dealertrack v. Huber for computer-aided method claims that fail to specify any level of computer involvement
  • Examination of the result in CyberSource Corp. v. Retail Decisions for process claims that recite a computer-readable medium
  • Interpretation of the Federal Circuit’s attempt to preserve subject matter scope in CLS Bank International v. Alice Corp

Main Volume Information

2011/1,232 pp. Hardcover/Order #9051P


Supplement Information

2012/294 pp. Hardcover/ISBN 9781617460517/Order #2051

Main Volume Information

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