Drafting Patents for Litigation and Licensing, Third Edition

A guide through the minefield of court decisions that have systematically eroded the scope and validity of patents. This treatise helps practitioners draft the broadest possible patent by synthesizing and applying lessons from the case law to sustain a validity challenge. It provides in-depth discussions on pitfalls in claim drafting; dangers of means plus-function clauses in claims; strategies to target direct infringers; the scope of enablement trends; instructions on how to Festo-proof a patent application; and more. The Third Edition is revised to: Update discussions based on evolving post-AIA (Leahy-Smith America Invents Act) case law Analyze evolving case law under 35 U.S.C. §101 and the U.S. Supreme Court s Alice Corp. decision Incorporate Supreme Court decisions on the PTAB s authority and scope of review (Oil States Energy Services, LLC v. Greene s Energy Group, LLC, confirming Congress s authority to create the PTAB trial system, and SAS Institute Inc. v. Iancu. rejecting the USPTO s argument that its practice of partial institutions was unreviewable) Address 2018 USPTO guidance on recent subject matter eligibility decisions The Third Edition also focuses on significant court decisions relating to patent law, including: In Travel Sentry, Inc. v. Tropp, the Federal Circuit noted the importance of correctly identifying the relevant activity or benefit that is being conditioned upon the performance of one or more claim steps An updated discussion on double patenting issues in chemical cases, including discussion of Gilead Sciences, Inc. v. Natco Pharma Ltd., where the Federal Circuit clarified that claims in a later-expiring patent that are obvious over an earlier-expiring patent must be terminally disclaimed or cancelled, regardless of which application was filed first, at least under modern rules of calculating patent term In the context of a biotechnology invention, the Supreme Court clarified the meaning of a substantial portion of the invention in Life Technologies Corp. v. Promega Corp. In Helsinn Healthcare S.A. v. Teva Pharms. USA, Inc., the Federal Circuit interpreted the on-sale bar provisions of the post-AIA version of 35 U.S.C. §102(b); the Supreme Court has granted cert. In re Janssen Biotech, Inc., the Federal Circuit held that an attempt to re-designate a patent issued on a CIP application as a divisional application during reexamination was insufficient to provide the issued patent the benefit of the Section 121 safe harbor The Risk of Inadvertent Misuse of Information Disclosed in Discovery to a Litigator who Performs Other Functions for her Client An extensive discussion of the three step process for determining whether litigators who also prosecute patent applications should be barred from access to the opposing party s highly confidential information Expanded and updated discussions of harmonization of different national approaches to patents, the Unified Patent Court in Europe, and forum shopping when litigating in Europe