2013/3 Volumes/5,600 pp. Hardcover with Case Digest on CD-ROM with 2014 Supplement/Order #9499
Effectively prepare and process a patent application, protect a client’s patent, or invalidate an infringing one
Patent Prosecution: Law, Practice, and Procedure, Eighth Edition addresses the wealth of changes in patent law wrought by the passage of the Leahy-Smith America Invents Act (AIA), recent court decisions, and statutory amendments. This treatise provides essential analysis of over 45 decisions of the Supreme Court, the Federal Circuit, and the Board of Patent Appeals and Interferences. It also explains prosecution rules from the U.S. Patent and Trademark Office and offers an element-by-element analysis of areas of law that form the basis of common PTO rejections and objections. The Eighth Edition covers many important cases, including the Supreme Court’s ruling in Mayo Collaborative Services v. Prometheus Laboratories, Inc., and discusses PTO guidelines that set forth a new procedure for examining subject matter eligibility in view of this decision. It also analyzes the second, 9-0, Supreme Court decision in Hyatt v. Kappos, allowing a patent applicant greater freedom to introduce new evidence to a district court. Additional highlights include these recent Federal Circuit decisions:
The Eighth Edition explores the AIA in detail, by explaining Patent Office final rules for the preissuance submission by third parties of prior art in pending applications. An accompanying searchable CD-ROM offers a comprehensive Cumulative Case Digest in HTML format, providing access to an extensive compilation of precedential language. Organized by specific issue, in favor of patentability, it contains excerpts from leading cases through December 31, 2013, and updated forms to reflect changes, with instructions, introduced by the AIA.
2014 Supplement alone/ISBN 978-61746-499-7/Order #2499
The 2014 Supplement covers recent important decisions including the Supreme Court’s decision in Association for Molecular Pathology v. Myriad Genetics Inc., which held that isolated deoxyribonucleic acid (DNA) is an unpatentable product of nature, while cDNA is a non-naturally occurring genetic sequence and is patent eligible. The Supplement covers Federal Circuit decisions in:
It also discusses the Patent Trial and Appeal Board’s holding In re Erol; the Act to Correct and Improve Certain Provisions of the Leahy-Smith America Invents Act; the Patent Law Treaties Implementation Act of 2012; and Patent Office Examination Guidelines for Implementing the First Inventor to File Provisions of the Leahy-Smith America Invents Act.
About the Author
Irah 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.
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“To say that Patent Prosecution is a comprehensive resource both for experienced patent practitioners, as well as new aspirants, is an understatement.” —David J. Kappos, from the Foreword
Partner, Cravath, Swaine & Moore LLPFormer Under Secretary of Commerce and Director of the U.S. Patent and Trademark Office
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