Patent Prosecution: Volumes I and II, with softcover 2005 Cumulative Case Digest

Complete strategy guide for prosecuting patents-and overcoming rejections. Overcome adverse actions, objections, or final rejection of your patent application with this complete strategy guide. Patent Prosecution: Law, Practice, and Procedure, is the new title of Patent Prosecution: Practice and Procedure Before the U.S. Patent Office. This new Fourth Edition is the same indispensable treatise written by nationally known and respected author, Irah H. Donner. The new title reflects the treatise’s decade-long transition from a purely prosecution-oriented legal reference to a broader resource that is equally strong in its analysis of patent case law, in an era when even subtle distinctions by the courts can mean the difference between success and failure in a patent infringement challenge. The Fourth Edition of Mr. Donner’s book provides both the guidance attorneys need to prosecute strong patents before the PTO and the analysis litigators will use to track and understand how the courts interpret patent claims at trial. Patent Prosecution: Law, Practice, and Procedure, 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 you get from the U.S. Patent Office. The new Fourth Edition also provides guidance regarding a variety of substantive areas of patent law useful for litigators, such as patent claim interpretations, prosecution history estoppel issues, means-plus-function claim issues, and patent validity. 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. The Fourth Edition also includes a new chapter on attorney opinions, such as patentability, noninfringement, and invalidity. The new edition of Patent Prosecution also addresses various significant changes in U.S. patent law as a result of recent decisions and statutory amendments, including: Patent Office procedure that nonpublication request requires affirmative intent by the applicant that the application will not be the subject of a foreign application requiring 18-month publication Phillips v. AWH Corp., where the Federal Circuit will rehear en banc its earlier decision regarding the general rules for patent claim construction The Toro Company v. White Consolidated Industries, Inc., where the Federal Circuit held that the disclosure-dedication rule is a question of law to be determined by a court and not a jury, and that subjective intent by the patentee is irrelevant Campbell Plastics Engineering & Mfg., Inc. v. Brownlee, where the Federal Circuit held that Campbell Plastics failed to comply with the Federal Acquisition Regulations ("FARs") invention disclosure provisions under the Bayh-Dole Act, and therefore forfeited title to the invention Knorr-Bremse v. Dana Corp., where the Federal Circuit reversed, en banc, the long-standing precedent of drawing an adverse inference for failure to obtain or produce an exculpatory opinion of counsel Includes Case Digest in Softcover and on CD! The accompanying Case Digest (in softcover volume and in Microsoft® Word 2000* format) gives you access to precedential language, organized by specific issue, in favor of patentability. The 2005 Case Digest contains excerpts from leading cases through December 31, 2004, including In re Klopfenstein, In re Wallach, In re Curtis, In re Beasley, SmithKline Beecham Corp. v. Apotex Corp., Knorr-Bremse v. Dana Corp., and Toro Co. v. White Consolidated Industries, Inc.