Patent Prosecution: Law, Practice, and Procedure, Ninth Edition

This three-volume comprehensive treatise provides a full discussion of the landscape of patent law, from threshold questions of patentability through post-grant patent law. It includes a thorough discussion of the enormous changes introduced by the Leahy-Smith America Invents Act. The book explains, in clear English, prosecution rules from the U.S. Patent and Trademark Office (PTO), offers an element-by-element analysis of areas of law that form the basis of common PTO rejections and objections, and provides analysis of major court decisions.



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:

  • Apple, Inc. v. Samsung Electronics Co., Ltd., describing a two-step process to determine whether one of ordinary skill would have combined teachings of the prior art to create the same overall visual appearance as the claimed design
  • In re Beineke, holding that the discovery of new and distinct mature oak trees found in the front yard of a home was not entitled to plant patent protection under 35 U.S.C. § 161
  • Thorner v. Sony Computer Entertainment Inc., holding that “implied” redefinition must be so clear that it equates to an explicit redefinition
  • Sandisk Corp. v. Kingston Technology Co., Inc., holding that the disclosure-dedication rule did not apply to incorporated by reference subject matter when the specification did not sufficiently indicate that the incorporated by reference subject matter was an alternative to the claim limitation
  • Falana v. Kent State University, holding that a putative inventor who conceived of the structure of a novel genus of chemical compounds and contributed to the method of making that genus, was considered to be a co-inventor to the conception of that genus
  • CLS Bank International v. Alice Corporation Pty. Ltd., holding that a computerized trading platform for exchanging obligations using a trusted third party was patent eligible. On October 9, 2012, the Federal Circuit granted the petition of CLS Bank for rehearing en banc
  • Plasmart, Inc. v. Kappos, holding that drawings can be used as prior art, without referring to the surrounding description, when the prior art features are clearly disclosed by the drawing
  • In re Antor Media Corporation, holding that a prior art printed publication cited by an Examiner is presumptively enabling, barring any showing to the contrary by a patent applicant or patentee
  • Voter Verified, Inc. v. Premier Election Solutions, Inc., holding that an online Internet posting of an article was considered a printed publication
  • Cummins-Allison Corp. v. SBM Co., Ltd., holding that drawings alone may provide an adequate written description under 35 U.S.C. § 112
  • Ergo Licensing LLC et al. v. Carefusion 303 Inc., holding that the mere disclosure of the words “control device” was insufficient to provide the corresponding structure for the means-plus-function element “control means”
  • In re Youman, holding that the recapture rule permits broader reissue claims of a scope between the original filed claim in the patent application and the issued patent claim
  • In re Baxter International, Inc., holding that a Patent Office reexamination proceeding need not defer to a prior court judgment over the same prior art
  • Bard Peripheral Vascular, Inc. v. W.L. Gore & Associates, Inc., holding that determinations of whether there was an objective risk of infringement should always be made by a judge, rather than a jury, and are subject to no deference on appeal

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.

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:

  • Accenture Global Services v. Guidewire Software, Inc. (a system claim reciting computer-implemented insurance function was not patent eligible)
  • Hamilton Beach Brands, Inc. v. Sunbeam Products, Inc. (the on-sale bar applies to an offer made by the patentee’s own supplier) 
  • Pronova Biopharma Norge v. Teva Pharmaceuticals (rejecting the argument that a public use of a pharmaceutical formulation requires use in treating a medical condition)

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.


Bloomberg BNA authors and editors are practicing professionals with insider perspectives and real-life experience. Learn more about this book’s authors and editors.
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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Read what others have to say about this Bloomberg BNA book.

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

Partner, Cravath, Swaine & Moore LLP; Former Under Secretary of Commerce and Director of the U.S. Patent and Trademark Office