Book

Electronic and Software Patents: Law and Practice, Fourth Edition, With 2018 Cumulative Supplement

This strategy guide helps practitioners draft, prosecute, and manage a portfolio of electronic and technology patents. It details claims drafting with the appropriate scope and preparing computer-related patent applications. Also included are practice “tips and traps."


Meet The Authors

Steven W. Lundberg
Editor-in-Chief
Stephen C. Durant
Editor-in-Chief
Ann M. McCrackin
Editor-in-Chief
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Description

Draft, prosecute, and manage a portfolio of electronic and technology patents.  

This strategy guide helps practitioners draft, prosecute, and manage a portfolio of electronic and technology patents. It details claims drafting with the appropriate scope and preparing computer-related patent applications. It also includes practice “tips and traps.”

Electronic and Software Patents: Law and Practice, Fourth Edition is a strategy guide that helps practitioners deal with today’s lightning-paced technological developments, changes in U.S. Patent and Trademark Office (USPTO) policy, and pivotal court rulings. In this step-by-step guide, experts provide perspectives and tactics, including guidance on tough decisions regarding patent protection, prior art, strategy, and drafting claims; lessons on preparing computer-related patent applications; insights on drafting with the appropriate scope; practice “tips and traps” for each step of the patent prosecution process; international drafting and prosecution strategies for Japan, the United States, and Europe, and where to file first; working with business method patents and design patents; in-house patent portfolio development; noninfringment and invalidity opinions; design-around techniques, and litigation of software patents.  

New in the Fourth Edition:

  • Expanded discussion of patent eligibility after Alice, including decisions by the Federal Circuit striking down business, financial, or entrepreneurial inventions as patent-ineligible
  • New discussion of claims interpretation in inter partes review and other post-grant proceedings for patent drafters following Cuozzo, in which the Supreme Court upheld the Patent Office’s regulation that the “broadest reasonable interpretation” standard applies to claims considered during inter partes review
  • Discussion of enhanced damages under the Patent Act after the Supreme Court’s decision in Halo Electronics
  • Detailed guidance on conducting successful interviews after the patent application is filed
  • Expanded discussion of patent infringement and recent case law
  • Analysis of the impact of the Defend Trade Secrets Act, which went into effect on May 11, 2016
  • And more  

 

New in the 2018 Cumulative Supplement:

  • A new chapter on post-grant issues discusses how the PTAB affects prosecution and litigation of electronic and software patents and PTAB’s impact on patent enforcement

  • The Supreme Court’s ruling in WesternGeco LLC v. ION Geophysical Corp. on whether patent owners could recover for lost foreign profits

  • Following T.C. Heartland, the Federal Circuit in In re Cray Inc. adopted a three-part test to establish venue under 28 U.S.C. §1400 (b)

  • The Federal Circuit further refined the “broadest reasonable interpretation” standard in In re Power Integrations, Inc., reversing the PTAB’s determination that claims in the patents at issue were unpatentable for anticipation

  • A new section explores the difference in technological subject matter available for protection under patent law and trade secret law

  • In Ineos USA LLC v. Berry Plastics Corp., the Federal Circuit provided guidance on how claimed ranges should be treated based on how the range is described in the specification

  • The Federal Circuit in Berkheimer ruled on eligibility under §101 and the USPTO subsequently issued guidance in response to the decision

  • The Federal Circuit in Travel Sentry, Inc. v. Tropp reaffirmed and expanded the decision in Akamai

  • Discussion of new patentable subject matter cases following Bilski

 

Authors

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


The AIPLA, founded in 1897, is a national bar association constituted primarily of lawyers in private and corporate practice, in government service, and in the academic community. It represents a wide and diverse spectrum of individuals, companies, and institutions involved directly or indirectly in the practice of patent, trademark, copyright, trade secret, and unfair competition law, as well as other fields of law affecting intellectual property. Its members represent both owners and users of intellectual property. For more information, visit www.aipla.org.

 

Steven W. Lundberg is a shareholder in Schwegman Lundberg & Woessner, P.A., Minneapolis, Minn.

 

Stephen C. Durant is a shareholder in Schwegman Lundberg & Woessner, P.A., San Jose, Calif.

 

Ann M. McCrackin is president of Black Hills IP and Of Counsel at Schwegman Lundberg & Woessner, P.A., Minneapolis, Minn.

 

Contents

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