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Patent Prosecution: Law, Practice, and Procedure, Sixth Edition expertly addresses the most recent substantive changes in the law by the district courts, the Court of Appeals for the Federal Circuit, and the U.S. Supreme Court. By providing extensive and in-depth analysis of Federal Circuit decisions, as well as all new prosecution rules from the PTO, this treatise is a resource that is equally as strong in its analysis of patent case law as it is for patent prosecution.
Patent Prosecution: Law, Practice, and Procedure, Sixth Edition is the only source that gives you an element-by-element analysis of the substantive areas of patent law that form the basis of common rejections and objections by the U.S. Patent Office. Applying years of research and practical experience, the author classifies a wide variety of Patent Office rejections and delivers proven response strategies to you, based on U.S. patent law and essential aspects of the prima facie case of unpatentability: utility, anticipation, obviousness, mathematical algorithms, business methods, priority, double patenting, enablement, best mode, and written description. This comprehensive resource is also a useful tool for litigators, assisting them in understanding the latest Federal Circuit decisions and Patent Office developments that might affect validity and infringement claims in the district courts.
This Sixth Edition covers cases interpreting the following claim terminology: Power Conversion Circuit, Smooth, Retention Member, Divider Member, Channel, Frame Member, Display Device, Display Module, Portable, Computer, and Computer System. It also addresses significant changes in U.S. patent law resulting from recent decisions and statutory and/or procedural amendments, including such important cases as:
- The Supreme Court KSR decision and post-KSR cases. The book includes Patent Office training examples that describe various rationales to be used in an obviousness rejections
- Tafas v. Dudas
- Howard Florey Institute v. Dudas
- Wyeth v. Dudas
- Cordis Corporation v. Medtronic Ave, Inc.
- Computing Docking Stating, Corp. v. Dell, Inc.
- DDB Technologies, L.L.C. v. MLB Advanced Media, L.P.
- SRI International, Inc. v. Internet Security Systems, Inc.
- American Seating Company v. USSC Group, Inc.
- Net MoneyIN, Inc. v. VeriSign, Inc.
- Cooper Technologies Co. v. Dudas
- Int'l Rectifier Corp v. IXXS Corp.
Includes Case Digest on CD!
The accompanying Case Digest (on CD in HTML format) gives you access to precedential language, organized by specific issue, in favor of patentability. The 2010 Cumulative Case Digest contains excerpts from leading cases through December 31, 2009, including In re Bilski, Ex parte Wasynczuk, Ex parte Bo Li, Ex parte Halligan, Microprocessor Enhancement Corporation v. Texas Instruments Incorporate, Ex parte Miyazaki, Aspex Eyewear, Inc. v. Altair Eyewear, Inc., and In re Swanson. *
The 2010 Supplement to Patent Prosecution: Law, Practice, and Procedure, Sixth Edition analyzes major new cases, including:
- Tafas v. Doll, where a split Federal Circuit held the Patent Office had authority to limit the number of claims and requests for continued examination (RCEs) and require examiner support documents (ESDs), but not to limit the number of continuations; the Federal Circuit agreed to rehear the case; and the Patent Office, on October 8, 2009, issues a final rule rescinding the regulations
- Prometheus Laboratories, Inc. v. Mayo Collaborative Services, where the Federal Circuit held that the medical treatment method met the Bilski patent-eligible subject matter test of "transformation into different state or thing"
- Abbott Laboratories v. Sandoz, Inc, where the Federal Circuit, acting en banc on its own initiative, decides 8 to 3 to adopt the rule in Atlantic Thermoplastics that process terms in product-by-process claims serve as limitations in determining infringement, rather than the rule announced in Scripps Clinic & Research Foundation v. Genentech, Inc., which held that product-by-process claims are not limited to the product prepared by the process set forth in the claim
- In re Kubin, where the Federal Circuit relied on KSR International Co. v. Teleflex Inc., and an older "obvious to try" case, and held biotech invention obvious
- Patent Office Notice on Interim Examination Instructions, published August 24, 2009, for evaluating subject matter eligibility under 35 U.S.C.§101 in conformance with In re Bilski
- Depuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., in which the Federal Circuit holds ensnarement bars a patentee from asserting a scope of equivalency that would encompass, or ensnare, the prior art; and that ensnarement was also held an issue of law decided by judge, not jury
- Extensive new information has also been added regarding a variety of additional cases from the Board of Patent Appeals and Interferences that deal with a computer implemented invention satisfying the statutory subject matter requirements under 35 U.S.C.§101
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