Book

Patent Prosecution: Law, Practice, and Procedure, Tenth Edition, With 2018 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.

 

 


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Description

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.


The 2018 Supplement adds discussion of:

  • Supreme Court decisions in Matal v. Tam, ruling that the federal government’s ban on offensive-trademark registrations violated the First Amendment; Star Athletica, LLC v. Varsity Brands, Inc., holding that decorative features of cheerleader uniforms were copyrightable; SCA Hygiene Products AB v. First Quality Baby Products, LLC, determining that the equitable defense of laches cannot be used as a defense to claims for infringement occurring during the six year statute of limitations period; and Samsung Electronics Co., Ltd. v. Apple Inc., concluding that for a multicomponent product, the relevant “article of manufacture” for damages under 35 U.S.C. §289 can be a component of that product, even though consumers could not purchase that component separately from the end product
  • Skedco, Inc. v. Strategic Operations, Inc., where the Federal Circuit held that claims are not generally limited to inventions looking like embodiments in the drawings

  • Aylus 2 Networks, Inc. v. Apple Inc., where the Federal Circuit held that statements made by a patent owner during inter partes review can support a finding of prosecution disclaimer and narrow the scope of the claims

  • Cardiaq Valve Technologies, Inc. v. Neovasc Inc., in which the Federal Circuit held the mere contribution of public knowledge, which could have been easily obtained by the named inventor, does not make one a co-inventor.

  • Several Federal Circuit cases on patent eligible subject matter, including Amdocs (Israel) Limited v. Openet Telecom, Inc., where the Federal Circuit held a system for monitoring activity on computer networks and creating records of it was patent eligible

  • Ex parte McAward, where in a precedential opinion, the Patent Trial and Appeal Board (Board) confirmed that for ex parte patent prosecution it will not use the U.S. Supreme Court's Nautilus Inc. v. Biosig Instruments Inc.standard, but will determine that a claim is indefinite if it uses words or phrases that are unclear

  • In re Chudik, where the Federal Circuit held that a prior art reference that must be distorted from its obvious design does not anticipate a patent claim

  • In re: Van Os, where the Federal Circuit held that that it is not enough for the Patent Trial and Appeal Board (Board) to provide the conclusory statement that the claimed invention would have been “common sense” or “intuitive” as the reason to combine or modify the prior art

  • Skky, Inc. v. Mindgeek, S.A.R.L., where the Federal Circuit held that the claim phrase “wireless device means" was not a means-plus-function element when the phrase signified structure, there was no function recited in connection with this phrase, and the claim was in method format

  • Several Federal Circuit decisions interpreting the America Invents act (AIA) statute including In re Aqua Products Inc., where the en banc Federal Circuit, in a 6-5 vote rejected the Board placing the burden of persuasion on the patent owner for substitute claims

  • Rembrandt Wireless Technologies LP v. Samsung Electronics Co., Ltd., where the Federal Circuit held that a disclaimer of a claim cannot serve to retroactively dissolve the marking requirement for a patentee to collect pre-notice damages under 35 U.S.C. § 287(a).

  • Amgen Inc. v. Sanofi, Aventisub LLC, where the Federal Circuit held that although enablement of a claimed invention is evaluated at the priority date, post-priority-date evidence may be relevant to determine enablement and written description at the time of the priority date

  • Guidelines describing how the Patent Office will handle ex parte reviews and reexaminations that are remanded back to the Board from the Federal Circuit

  • Perfect Surgical Techniques v. Olympus America, Inc., where the Federal Circuit clarified the requirements for diligence for patent applications filed before March 16, 2013 under the first-to-invent system. Specifically, the court held that to show diligence the inventor need only prove there was reasonably continuous diligence

 

The accompanying searchable online appendix updated for the 2018 Supplement offers a comprehensive Cumulative Case Digest with an extensive compilation of precedential language, organized by specific issue, in favor of patentability.

 


 

 

Author

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.

Contents

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

Reviews

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

“Irah’s thorough work … addresses both the law and the practice, making it an ideal guide for those working in the patent system on a day-to-day basis.”

David J. Kappos

former Director, U.S. Patent and Trademark Office (from the Foreword)