Constructing and Deconstructing Patents, Second Edition

Intellectual property (IP) remains the life blood of many businesses, and its proper cultivation and protection are crucial to strengthening a company s competitive advantage. Fundamental to preserving the value of IP assets is ensuring that patents are constructed properly from the beginning. Irah H. Donner author of the classic Bloomberg BNA treatise Patent Prosecution: Law, Practice, and Procedure has now revised his seminal guide on the subject: Constructing and Deconstructing Patents, Second Edition, to reflect changes made by the Leahy-Smith America Invents Act (AIA) and landmark Supreme Court decisions. The newly-updated treatise walks the reader through the complex landscape of patent drafting. It provides a standard methodology that patent attorneys and agents can rely on to simplify the patent application process. Regardless of the particular type of patent, or the level of its technical subject matter, this treatise will help ensure each section of the patent application is carefully considered and fully developed before submission to the USPTO. Original, continuation, continuation-in-part, divisional, and provisional patent applications are covered in the text, and examples are taken from the invention types or technologies most regularly filed with the PTO, including mechanical, electrical, and chemical patents. The treatise also discusses the major areas of patent law that can affect the strength and vitality of a patent years after the patent was granted. Having this expert insight equips litigators and patent attorneys and agents to deconstruct the major elements of a patent, assessing its strengths and weaknesses. This feature is especially important in the context of litigation, with respect to the completeness and satisfaction of the application s requirements and in spotting elements that can be successfully challenged on legal grounds. Changes in the new edition include the following: Conversion from a First-to-File to a First-to-Invent patent system, along with changes to definitions of prior art that fall under 35 U.S.C. §102 Discussion of Bilski v. Kappos, Mayo Collaborative Services v. Prometheus Laboratories, Inc., Association for Molecular Pathology v. Myriad Genetics Inc., and Alice Corp. Pty. Ltd. v. CLS Bank Int l regarding patent eligible subject matter Exclusion of tax strategies and human organisms from patent eligible subject matter under the AIA Elimination of the best mode defense under the AIA Patent attorneys and agents engaged in patent application drafting practice before the PTO will find this book to be extremely valuable, as will litigators seeking both to understand the construction of patent applications, and to deconstruct them during litigation. The book s detailed organization makes it accessible as a guide for the new attorney or agent, while its time-tested methodology provides valuable insights for the experienced practitioner and can serve as a checklist review for each phase of constructing and deconstructing patents. With the publication of Constructing and Deconstructing Patents, Second Edition, the author has provided an updated, useful tool attorneys and agents will find invaluable in their work to successfully secure patents.