Main Volume Information
Effectively prepare and process a patent application, protect a client’s patent, or invalidate an infringing one
“When I first started patent practice, I used Irah Donner’s Patent Prosecution treatise on a daily basis and I still use it regularly, most commonly when I have a client issue I haven’t dealt with before or when I want to brush up on some aspect of prosecution that I haven't done in a while. I recommend to all of our new associates that they get a copy of the Donner treatise and use it regularly.”
Patent Prosecution: Law, Practice, and Procedure, Seventh Edition expertly addresses the most recent substantive changes in patent law by the district courts, the Court of Appeals for the Federal Circuit, and the U.S. Supreme Court. This treatise also explains new prosecution rules from the Patent and Trademark Office (PTO), making it a resource that is equally strong in its analysis of patent case law as it is in its analysis of patent prosecution.
This is the only text that offers an element-by-element analysis of the substantive areas of patent law that form the basis of common rejections and objections by the PTO. The author classifies a wide variety of PTO rejections and delivers proven response strategies, based on U.S. patent law and essential aspects of the prima facie case of unpatentability. This comprehensive resource is also a useful tool for litigators, assisting them in understanding the latest Federal Circuit decisions and PTO developments that might affect validity and infringement claims in the district courts.
The Seventh Edition covers important cases, including the Supreme Court’s ruling in the long-awaited Bilski v. Kappos decision, which held that business methods are not specifically excluded under the patent laws, rejected the Federal Circuit’s machine-transformation test as the exclusive test, and declined to establish a specific test for patent eligibility. The book also analyzes the PTO’s examination guidelines, “Interim Guidance for Determining Subject Matter Eligibility for Process Claims in view of Bilski v. Kappos.” Other recent decisions discussed include:
The 2012 Supplement addresses various significant changes in U.S. patent law resulting from recent decisions and statutory amendments. The treatise discusses changes to the patent law set forth in the Leahy-Smith America Invents Act, including prioritized Track I examination, the first-to-invent system, elimination of the best mode defense, revised standards for inter partes reexamination, and others. In addition, it covers more than 40 decisions of the Supreme Court, the Federal Circuit, and the Board of Patent Appeals and Interferences, including:
The 2012 Supplement also includes a searchable CD-ROM with a comprehensive Cumulative Case Digest in HTML format, providing access to an extensive compilation of precedential language. The Cumulative Case Digest is organized by specific issue, in favor of patentability. It contains excerpts from leading cases through December 31, 2011.
2011/3 Volumes/5,248 pp. Hardcover with Case Digest on CD-ROM/Order #9080P
2012/ISBN 9781617460807/Order #2080
Main Volume InformationAbout the AuthorIrah H. Donner is a partner in the Intellectual Property department of Stroock & Stroock & Lavan LLP, New York, NY. He 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.
Irah H. Donner, Author
Take advantage of our bundled pricing
10% discount on Web Orders. Use priority code BNAWEB13.