Patent Prosecution: Law, Practice, and Procedure, Tenth 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.



Price: $635.00 Main Volume

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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. The book places new substantive discussions in context with existing patent laws and regulations, and also explains prosecution rules from the U.S. Patent and Trademark Office (PTO). Written by a seasoned patent lawyer, the three-volume text offers an element-by-element analysis of areas of patent law that form the basis of common PTO rejections and objections, and which can also be used in litigation in federal court.

The Tenth Edition is updated to analyze and highlight the significance of recent Supreme Court cases on patent issues such as the review standard for Inter Partes Review (IPR) and a more flexible approach to award enhanced damages for egregious litigation misconduct.

It highlights Federal Circuit decisions on patent issues, including various cases examining procedures under the America Invents Act (AIA), the on sale bar, disavowal of claim scope through disparagement, cases on patent eligible subject matter, and the use of common sense in an obviousness rejection. 

The Tenth Edition adds discussion of:

  • Cuozzo Speed Technologies, LLC where the Supreme Court held that review of the Patent Trial and Appeal Board decision to institute an IPR is prohibited even after final decision, and that patent claims in an IPR are to be construed under the “broadest reasonable interpretation” standard
  • Consolidated cases Stryker Corp. v. Zimmer, Inc. and Halo Electronics, Inc. v. Pulse Electronics, Inc., where the Supreme Court overturned the Federal Circuit’s strict test used to award enhanced damages, allowing district courts more freedom to exercise discretion under 35 U.S.C. §284 to increase damages up to 3X the amount awarded for egregious cases of misconduct beyond typical infringement
  • En banc Federal Circuit decision The Medicines Co. v. Hospira holding that a contract manufacturer’s sale to the inventor of manufacturing services where neither title to the embodiments nor the right to market the same passes to the supplier did not constitute an invalidating sale
  • Immersion Corp. v. HTC Corp. where the Federal Circuit held that continuation applications may be properly filed on the issue date of the parent application
  • Several Federal Circuit decisions interpreting the AIA statute
  • Final rules amending the rules relating to trial practice for contested trials under the AIA allowing new testimonial evidence to be submitted with a Patent Owner Preliminary Response

The accompanying searchable electronic appendix updated for the Tenth Edition offers 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 Manatt, Phelps & Phillips, LLP in New York City, where he concentrates on patent prosecution, technology audits, intellectual property transactional due diligence, and transactional work, including licensing and development agreements and litigation support.


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