BOOK

Patents After the AIA: Evolving Law and Practice

This comprehensive treatise provides a self-contained, single volume desk-reference and guide to tactical and strategic patenting decisions for patent professionals after the most comprehensive revision to U.S. patent law since 1952, the America Invents Act (AIA). The AIA fundamentally altered U.S. patent law by transitioning from a “First-to-Invent” to a “First-Inventor-to-File” patent system.

Price: $385.00 Main Volume

DESCRIPTION

AN INNOVATIVE TREATISE on tactical and strategic patent decisions for today’s patent professionals.

This comprehensive treatise provides a self-contained, single volume desk-reference and guide to tactical and strategic patenting decisions for patent professionals after the most comprehensive revision to U.S. patent law since 1952, the America Invents Act (AIA). The AIA fundamentally altered U.S. patent law by transitioning from a “First-to-Invent” to a “First-Inventor-to-File” patent system. The pragmatic style of Patents After the AIA: Evolving Law and Practice provides insights and advice for patent application preparation and filing, post-issuance review and challenges to patentability, and ongoing international patent law harmonization. It also provides historical and legislative discussions and practical foundational discourses.

Patents After the AIA: Evolving Law and Practice includes the following unique content: 

  • More than 350 “Practice Tips” to highlight key points and serve as warnings and guideposts to the patent professional
  • More than 100 original graphical timeline scenarios provides a myriad of different fact patterns analyzed under the AIA and compared to pre-AIA outcomes
  • In-depth analysis and policy discussions explain complex changes to the law
  • A glossary of more than 400 terms and phrases with concise definitions and descriptions, which enhances the precision and consistency of patent law discussions regarding the intent, implementation, and impact of the AIA, addresses the existing lack of clear terms and phrases that capture the fundamental changes to U.S. patent law encompassed by the AIA

Thousands of footnotes provide support for the treatise and serve as easy references for the reader to find the source materials discussed, including U.S. patent-related statutes, legislation, case law, and U.S. Patent and Trademark Office (USPTO) practice guidance (e.g., guidelines, regulations, and policies), giving the patent professional direct reference to the statutory, judicial, regulatory, and policy standards relevant to the issues which patent professionals encounter on a day-to-day basis. Key documents are provided in an online appendix.

Each chapter includes descriptive titles and headings reflecting information content. This organization helps readers readily access specific topics within a chapter to access issues of immediate interest. Extensive cross-references are provided to related sections of the treatise that provide greater depth of discussion

 


AUTHORS

The authors have had extensive experience with the legislation and regulations for the AIA, having served in various capacities both within AIPLA and on other bar committees that were responsible for analysis and comment on the AIA and subsequent regulations.

 

Alan J. Kasper is a senior partner in the international intellectual property (IP) law firm Sughrue Mion, PLLC, with offices in Washington DC, California, and Tokyo, where he has practiced law since 1985 and managed the firm's International Department.  Alan’s practice focuses on patent matters and consists primarily of prosecution, litigation, licensing, opinions (including serving as an independent evaluator for standards groups) and counseling on patent strategies for a wide variety of clients in the advanced electrical, optical, semiconductor, computer-based and mechanical technologies

Brad D. Pedersen is a patent attorney with nearly 30 years of experience in patent law, engineering, business and entrepreneurship. He is a partner and the chair of the patent practice group at Patterson Thuente Pedersen, P.A., an intellectual property law firm in Minneapolis, Minnesota. Brad concentrates his practice in the areas of post-issuance review proceedings, high-technology, computer, software and medical device patent prosecution strategy, licensing and litigation.

 


Ann M. Mueting, Ph.D., J.D., is a founding shareholder of the firm Mueting, Raasch & Gebhardt, in Minneapolis, MN, which began in 1995 and represents Fortune-500 companies, biomedical firms, universities, various mid-size and start-up companies, as well as individual entrepreneurs.  Ann is a patent attorney practicing in the areas of patent prosecution, due diligence, and related opinion work with emphasis in Chemical and Biotechnology Patent Law.

 


Gregory D. Allen is an Assistant Chief Intellectual Property Attorney at 3M Innovative Properties Company, a subsidiary of 3M Company (3M), St. Paul, MN.  Greg joined 3M as an Advanced Product Development Engineer in 1985, before joining 3M’s Legal Department in 1989.  His practice focuses on patent matters, including prosecution and opinions primarily in the chemical area, as well as Intellectual Property (IP) agreements, including licensing, joint development, and Government R&D contracts. 

 


Brian R. Stanton, Ph.D., works on IP, trade, and associated technology innovation policy matters. A principal in Stanton Consulting Services, Dr. Stanton was the Director of the Division of Policy at the National Institutes of Health’s (NIH) Office of Technology Transfer and was responsible for IP and technology transfer policy for the U.S. Public Health Service (NIH, FDA, and CDC) until 2006.  His prior appointment at the US Patent and Trademark Office included efforts in establishing IP standards for bioinformatics, transgenic animals, and genomics.

 


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.

 


CONTENTS

View summary tables of contents.

REVIEWS