This book is suitable for a law school class on patent prosecution, which is advocacy in the United States Patent and Trademark Office. Books on patent law are not helpful to a lawyer developing an argument for patentability, because they often apply patent office standards that are different from those in court. This book includes edited cases and problems with answers to illustrate the topics, and a single case study consistent throughout the book includes an invention story, developing a theory of patentability, preparing a patent application, surprises in the patent office, and a response to a patent examiner¿s rejection.
U.S. Patent Prosecution for Support Staff is a practical desk reference, designed to promote ongoing learning and job proficiency for paralegals and secretaries assisting patent practitioners in submitting filings to the United States Patent and Trademark Office. It presents complex filing requirements in an easy-to-follow format, and reduces volumes of information into concise, accessible learning points that will assist both novice and seasoned support staff alike as they work to develop or update the breadth and depth of their knowledge of U.S. patent prosecution. A comprehensive guide, U.S. Patent Prosecution for Support Staff provides a detailed step-by-step guide to the filing requirements for the most frequently filed activities in U.S. patent prosecution, as well as more novel filings. The content includes the most recent provisions of the America Invents Act, the American Invents Act Technical Corrections Bill, and the Patent Law Treaty.
Many applicants use the Patent Cooperation Treaty (PCT) system as a first step to obtain patent protection for their inventions in a large number of countries. This practice-oriented book on the PCT – the only such book available – provides expert guidance on how to carry out the treaty’s procedures, from filing a single international patent application to starting prosecution before a plurality of national Offices. Building from an authoritative overview of the PCT’s sources and how they link to form the legal basis for a complete procedure, the contributors elucidate such invaluable practical details as the following: complete details on filing under the PCT, including the means of filing, fee payments, and priority, both in general and in specific national patent Offices; strategy points for making decisions on options in procedures and for drawing attention to important issues; citations from the Practical Advices published by the World Intellectual Property Organization (WIPO); differences between several regional and national Offices, such as the EPO and the USPTO; extensive treatment of remedies available in each procedure; guidance through the PCT – Patent Prosecution Highway (PCT-PPH); and extensive linking to international and national resources for the PCT. The authors include legal experts from WIPO and the European Patent Office (EPO), as well as well-known patent law practitioners. With its wealth of guidance ranging from a broad introduction to specific details of procedural strategy, this book will be of immeasurable value in the day-to-day practice of patent attorneys, corporate counsel, and paralegals worldwide. It will be of great use to candidates preparing for exams where a profound knowledge of the PCT is required.
Invention Analysis and Claiming presents a comprehensive approach to analyzing inventions and capturing them in a sophisticated set of patent claims. A central theme is the importance of using the problem-solution paradigm to identify the "inventive concept" before the claim-drafting begins. The book's teachings are grounded in "old school" principles of patent practice that, before now, have been learned only on the job from supervisors and mentors.
Patent Ethics: Prosecution serves as an essential guide to the ethical issues arising in the course of the patent prosecution process. By providing relevant rules and case law, it allows practitioners to identify ethical problems before they arise and to address them most effectively when they do. Patent Ethics: Prosecution is the first of two volumes on patent ethics-the second is on litigation-written by Professor David Hricik and Drinker Biddle partner Mercedes Meyer. This treatise is the first of its kind to combine the United State Patent and Trademark Office (PTO) rules with commentary by the authors, which distills the authors' own experience and expertise in patent prosecution into effective practice strategies.
"This comprehensive book is the first of its kind to take scientists and engineers beyond simply getting a patent granted. Through the author's extensive technical background and experience in intellectual property licensing, it ties the many technical, legal and business aspects of patent enforcement to the innovation and patenting stage in the patent value chain, with the objective of helping inventors to create valuable patents that can be capitalized. In easy-to-understand language, this book covers various aspects, including basic concepts of patent laws and rules, innovation protection, patenting, patents post-granting and patent licensing. With over 40 tables, 70 figures, nearly 100 cases and examples, and a comprehensive index table, it serves as a practical handbook for inventors and patent practitioners. This second edition incorporates the latest changes in the America Invents Act (AIA), with additional case studies and illustrations throughout the book. For inventors who want to file patents by themselves, this new edition provides guidelines and step-by-step instructions on preparing and filing a US provisional patent application, while avoiding the pitfalls that commonly occur in do-it-yourself patenting."--
This authoritative, one-stop source of practical information on patent law fundamentals is stocked with forms, diagrams, flowcharts, and hypothetical Q&As. "Patent Law" gives you a hands-on knowledge of the rights, obligations, and limits of all parties - laws governing different types of patents -- basics of patent office prosecution -- tests used to determine the validity of inventions, direct infringement, and third-party liability -- and the steps involved in preparing specifications and patent claims.
