Patent Prosecution, 7th Edition

ISBN 10: 1617460117 / ISBN 13: 9781617460111
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Synopsis: Your invaluable reference for preparing and processing a patent application, protecting a client s patent, or invalidating an infringing one.Patent Prosecution: Law, Practice, and Procedure, Seventh 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, as well as all new prosecution rules from the PTO, making it a resource that is equally as strong in its analysis of patent case law as it is for patent prosecution.This is the only resource 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. 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.The Seventh Edition covers important recent cases, including the Supreme Court s decision on the long-awaited Bilski v. Kappos case, which held that business methods are not specifically excluded under the patent laws, rejected the Federal Circuit's machine-transformation test as the exclusive test and declined to establish a specific test for patent eligibility. It also examines the United States Patent Office's examination guidelines entitled Interim Guidance for Determining Subject Matter Eligibility for Process Claims in view of Bilski v. Kappos . The book also discusses In re Tanaka, where the Federal Circuit reversed the BPAI holding that the addition of a dependent claim rendered the patent inoperative. The Seventh Edition also addresses significant changes in U.S. patent law resulting from recent decisions and statutory and/or procedural amendments, including such important cases as: Association for Molecular Pathology and ACLU v. USPTO and Myriad Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co. Wyeth and Elan Pharma International, Ltd. v. Under Sec. of Commerce for Intellectual Property Hyatt v. Acting Director, Patent and Trademark Office Cancer Research Technology Ltd. v. Barr Laboratories, Inc. Harari v. Hollmer Bradford Co. v. Conteyor North America, Inc. Hif Bio, Inc. v. Yung Shin Pharmaceuticals Industrial Co., Ltd. Vanderbilt Univ. v. Icos Corp. In re Giacomini, Inc. v. Lansa, Inc. Transocean Offshore Deepwater Drilling, Inc. v. Maersk Contractors USA, Inc.

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Title: Patent Prosecution, 7th Edition
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