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
This treatise provides essential analysis of significant changes to U.S. patent law resulting from decisions of the Supreme Court, the Federal Circuit, and the Patent Trial and Appeal Board and places new substantive discussions in context with existing patent laws and regulations. It also explains prosecution rules from the U.S. Patent and Trademark Office (PTO) and offers an element-by-element analysis of areas of patent law that form the basis of common PTO rejections and objections, which can also be used in litigation in federal court.
The Ninth Edition is updated to analyze and highlight the significance of recent Supreme Court cases on patent issues such as patent-ineligible abstract ideas, patentability of products of nature, claim definiteness, and induced infringement.
The Ninth Edition adds discussion of

  • Supreme Court decisions in Limelight Networks, Inc. v. Akamai Technologies, Inc.; Alice Corp. Pty. Ltd. v. CLS Bank Int’l; Nautilus, Inc. v. Biosig Instruments, Inc.; and Association for Molecular Pathology v. Myriad Genetics Inc.
  • Federal Circuit decisions in Novartis AG et al. v. Lee; Oracle America Inc. v. Google Inc.; In re Biedermann; Ring & Pinion Service Inc. v. ARB Corp. Ltd.; Troy v. Samson Manufacturing Corp.; In re Roslin Institute (Edinburgh); and more.

The Ninth Edition also covers PTO rules and guidance including “2014 Interim Guidance on Patent Subject Matter Eligibility” under §101 after Alice, Myriad, and Mayo, and “Examination Guidelines for Implementing the First Inventor to File Provisions of the Leahy-Smith America Invents Act” providing for the submission of affidavits or declarations to overcome prior art. It also incorporates important decisions covered in the 2014 Supplement, including the Supreme Court’s decision in Association for Molecular Pathology v. Myriad Genetics Inc., which held that DNA is an unpatentable product of nature, while cDNA is a non-naturally occurring genetic sequence and is patent eligible.
The accompanying searchable electronic appendices offer a comprehensive Cumulative Case Digest with an extensive compilation of precedential language, organized by specific issue, in favor of patentability.


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. 


View full tables of contents and read the book’s preface or introduction.


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