Patent Prosecution: Law, Practice, and Procedure, Ninth Edition, with 2016 Supplement

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 analyzes and highlights 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 2016 Supplement adds discussion of: 

  • U.S. Supreme Court decisions: Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc., rejecting de novo review on appeal for all claim constructions, ruling that some constructions involve factual findings that are entitled to deference; and Commil USA, LLC v. Cisco Systems, Inc., where the Court held that an accused infringer’s belief that a patent is invalid does not serve as a defense to charges of inducing infringement of the patent 
  • Federal Circuit en banc decisions: Akamai Techs., Inc. v. Limelight Networks, Inc., on remand from the Supreme Court, where a unanimous en banc court held that direct infringement of a method claim was established because performance of one of the method steps by customers was attributable to the accused infringer; Williamson v. Citrix Online, LLC, which held en banc that prior decisions indicating that the presumption was “strong” when a claim term is not a means plus function element were incorrect 
  • Key Federal Circuit decision: DDR Holdings, LLC v. Hotels.Com, L.P. holding patent eligible a system that generated and directed a visitor to a hybrid web page that combined product information from a third-party and visual “look and feel” elements from a host website 
  • Several Federal Circuit decisions interpreting the America Invents Act (AIA) statute, including Cuozzo Speed Technologies, LLC

 The accompanying searchable electronic appendices offer a comprehensive Cumulative Case Digest, updated through 2015, 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