Drafting Patents for Litigation and Licensing, Third Edition

This treatise is essential to help practitioners draft the broadest possible patent by synthesizing and applying lessons from case law to sustain a validity challenge. The Second Edition highlights real-life examples, and focuses in particular on the Leahy-Smith America Invents Act (AIA) and validity trials at the Patent Trial and Appeal Board.

Price: $393.75 Main Volume

Meet The Author

H. Wayne Porter



A guide through the minefield of court decisions that have systematically eroded the scope and validity of patents.

This treatise helps practitioners draft the broadest possible patent by synthesizing and applying lessons from the case law to sustain a validity challenge. It provides in-depth discussions on pitfalls in claim drafting; dangers of means plus-function clauses in claims; strategies to target direct infringers; the scope of enablement trends; instructions on how to “Festo-proof” a patent application; and more.

The Third Edition is revised to:  

  • Update discussions based on evolving post-AIA (Leahy-Smith America Invents Act) case law

  • Analyze evolving case law under 35 U.S.C. §101 and the U.S. Supreme Court’s Alice Corp. decision

  • Incorporate Supreme Court decisions on the PTAB’s authority and scope of review (Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, confirming Congress’s authority to create the PTAB trial system, and SAS Institute Inc. v. Iancu. rejecting the USPTO’s argument that its practice of partial institutions was unreviewable)

  • Address 2018 USPTO guidance on recent subject matter eligibility decisions

The Third Edition also focuses on significant court decisions relating to patent law, including: 

  •  In Travel Sentry, Inc. v. Tropp, the Federal Circuit noted “the importance of correctly identifying the relevant ‘activity’ or ‘benefit’ that is being conditioned upon the performance of one or more claim steps”

  • An updated discussion on double patenting issues in chemical cases, including discussion of Gilead Sciences, Inc. v. Natco Pharma Ltd., where the Federal Circuit clarified that claims in a later-expiring patent that are obvious over an earlier-expiring patent must be terminally disclaimed or cancelled, regardless of which application was filed first, at least under modern rules of calculating patent term

  • In the context of a biotechnology invention, the Supreme Court clarified the meaning of a “substantial portion” of the invention in Life Technologies Corp. v. Promega Corp.

  • In Helsinn Healthcare S.A. v. Teva Pharms. USA, Inc., the Federal Circuit interpreted the “on-sale bar” provisions of the post-AIA version of 35 U.S.C. §102(b); the Supreme Court has granted cert.

  • In re Janssen Biotech, Inc., the Federal Circuit held that an attempt to re-designate a patent issued on a CIP application as a divisional application during reexamination was insufficient to provide the issued patent the benefit of the Section 121 safe harbor

  • The Risk of Inadvertent Misuse of Information Disclosed in Discovery to a Litigator who Performs Other Functions for her Client

  • An extensive discussion of the three step process for determining whether litigators who also prosecute patent applications should be barred from access to the opposing party’s highly confidential information

  • Expanded and updated discussions of harmonization of different national approaches to patents, the Unified Patent Court in Europe, and forum shopping when litigating in Europe

Summary of Contents


Chapter 1. The State of the Law of Claim Construction and Infringement


Chapter 2. Pitfalls in Patent Drafting


Chapter 3. Drafting the Winning Patent


Chapter 4. Continued Prosecution of the Patent


Chapter 5. Mechanical Patents


Chapter 6. Electrical Patents


Chapter 7. Software, E-Commerce, Internet, and Business Method Patents


Chapter 8. Chemical and Pharmaceutical Patents


Chapter 9. Biotechnology Patents


Chapter 10. Design Patents


Chapter 11. Combining Prosecution With Other Forms of Representation


Chapter 12. Drafting U.S. Patents With a View Toward Europe


Chapter 13. Validity Trials at the Patent Trial and Appeal Board





Bloomberg BNA authors and editors are practicing professionals with insider perspectives and real-life experience. Learn more about this book’s authors and editors.

Contributing chapter authors are seasoned patent practitioners and members of the ABA Section of Intellectual Property Law.


Main Volume Contributing Authors

Supplement Contributing Authors

ABA Section of Intellectual Property Law

H. Wayne Porter is a partner at Banner & Witcoff, Ltd., Washington, DC.

Contributing chapter authors are seasoned patent practitioners and members of the ABA Section of Intellectual Property Law.


View full tables of contents, preface or about the authors.


Read what others have to say about this Bloomberg BNA book.

I highly recommend BNA’s new book, Drafting Patents for Litigation and Licensing. I find it to be an excellent resource for patent practitioners who prepare and prosecute patent applications from the perspective of how patents issuing from their applications will be litigated or licensed. This remarkable book comprehensively provides practical guidance to its readers utilizing real-world litigation examples covering a broad spectrum of technologies for drafting high quality patent applications that can be filed in both the United States and Europe.

Stephen G. Kunin

Partner, Oblon, Spivak, McClelland, Maier & Neustadt, PC, Director of the Intellectual Law Program at the George Mason School of Law, Former Deputy Commissioner for Patent Examination Policy with the U.S. Patent and Trademark Office

Drafting Patents for Litigation and Licensing is an excellent book for anyone involved in the practice of writing patent applications, preparing patent non-infringement and invalidity opinions, or litigating patents. For business attorneys who already have a general understanding of patent law and desire to learn more, this book will serve as a good reference. The authors selected to write each chapter clearly know their subjects and do an excellent job of presenting the material. The book is well crafted to assist those in the practice of drafting, litigating, or licensing patents to assist their clients in assessing the strengths and weaknesses of a patent.

William F. Vobach

Patent Attorney, Author, Partner with Swanson and Bratschun, LLC, Denver, CO