Patent Prosecution: Law, Practice, and Procedure, Eleventh Edition
Patent Prosecution: Law, Practice, and Procedure is a three-volume comprehensive treatise providing 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.
Patent Prosecution: Law, Practice, and Procedure 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 Eleventh Edition addresses significant changes in U.S. patent law resulting from recent decisions and statutory amendments. Patent Prosecution reflects a continuing effort to provide substantive treatment of relevant decisions and changes in the statutory and regulatory requirements. New material includes analyses of the decisions of the Supreme Court, the Federal Circuit, and the Patent Trial and Appeal Board. These include the Supreme Court’s decisions in Oil States Energy Services LLC v. Greene’s Energy Group LLC and SAS Institute Inc. v. Iancu. The new edition also discusses various changes made (and still to come) in patent law via the Leahy-Smith America Invents Act (AIA), particularly relating to contested proceedings.
The Eleventh Edition adds discussion of:
- The Supreme Court decisions of Oil States Energy Services LLC v. Greene’s Energy Group LLC, where the Court held that inter partes review (IPR) proceedings under the America Invents Act (AIA) does not violate Article III or the Seventh Amendment of the Constitution; and SAS Institute Inc. v. Iancu, where the Court held that the Patent Trial and Appeal Board (Board) must decide the validity of every challenged claim when it agrees to institute America Invents Act (AIA) reviews
- Oracle America, Inc. v. Google LLC, where the Federal Circuit held that Google’s commercial use of the Application Programmer Interface (API) packages was not a fair use. Chapter 1 also discusses Droplets, Inc. v. E*TRADE Bank, where the Federal Circuit denied priority when the Patent Office issued a corrected filing receipt that deleted the priority claim to the earlier application.
- In re Nordt Development Co., LLC, in which the Federal Circuit held that “injection molded” was structural and should have been given weight when determining patentability
- Advanced Video Technologies v. HTC Corp., where the Federal Circuit held that a co-inventor’s ownership rights in patent were not immediately transferred via her employment agreement that stated she “will assign” all her right, title, and interest in any inventions, and therefore the employment agreement did not confer standing
- Nintendo of America Inc. v. Ilife Technologies, Inc., in which the Federal Circuit held that the Board’s reliance on inventor declarations, the declarations of corroborating witnesses, and the corroborating contemporaneous evidence, taken together, was sufficient to conclude that the prototype created by the inventors was within the scope of the claims and would work for its intended purpose
- Detailed analyses of various Federal Circuit cases on patent-eligible subject matter
- In re VerHoef, where the Federal Circuit held that the applicant’s failure to name a joint inventor rendered claimed invention invalid under 35 U.S.C. § 102(f)
- Polaris Industries, Inc. v. Arctic Cat, Inc., where the Federal Circuit held that “subjective preferences” have no place in an obviousness analysis because such preferences focus on what one of ordinary skill would have been able to do, rather than what one of ordinary skill would have been motivated to do at the time of the invention.
- Nintendo of America Inc. v. Ilife Technologies, Inc., where the Federal Circuit held the disclosure of a sensor, a processor, and a transmitter and that the invention could be used with cellular telephones, PCS handset devices, portable computers, metering devices, transceivers, and the like provided adequate support for the claimed “communications device”
- Exmark Manufacturing Company v. Briggs & Stratton Power, where the Federal Circuit held that the claim phrase “elongated and substantially straight,” used to describe a baffle portion of a lawnmower, informed those skilled in art about the scope of invention with reasonable certainty, and was not indefinite.
- In re Janssen Biotech, Inc., where the Federal Circuit held that the 35 U.S.C. §121 safe harbor protects only divisional applications and patents issued of divisional applications. Accordingly, patents issued on continuation-in-part (CIP) or continuation applications are not within the scope of § 121.
- Advantek Mktg., Inc. v. Shanghai Walk-Long Tools Co., where the Federal Circuit held that there was no estoppel resulting from the election of figures in a design application where the accused product was outside the scope of the alleged surrender.
- Several Federal Circuit decisions interpreting the America Invents act (AIA) statute, including: the en banc decision of Wi-Fi One LLC v. Broadcom Corp., where the court ruled that decisions by the Patent Trial and Appeal Board (Board) on the timeliness of an IPR petition can be appealed; Applications In Internet Time, LLC v. RPX Corporation, where the court instructed the Patent Trial and Appeal Board (Board) to use a broader test when looking for unnamed beneficiaries in contested patent reviews;
- Final rules entitled, Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board replacing the broadest reasonable interpretation (“BRI”) standard with the same claim construction standard used in patent litigation by federal district courts.
- Polara Engineering Inc. v. Campbell Company, where the Federal Circuit held that the jury was allowed to not credit testimony of the infringer’s president that it received “a clean bill of health” and “got the go” from their attorneys, where the infringer did not submit any documents or third-party testimony showing it received an opinion of counsel that the patent was invalid or not be infringed.
A comprehensive Cumulative Case Digest with an extensive compilation of precedential language, organized by specific issue, in favor of patentability, is available with the digital version of the Eleventh Edition on Bloomberg Law.
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.
“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)