Patent Prosecution: Law, Practice, and Procedure, Eleventh Edition

This treatise 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 of Patent Prosecution: Law, Practice, and Procedure 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 (PTAB). 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 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 PTAB must decide the validity of every challenged claim when it agrees to institute 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
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 Detailed analyses of various Federal Circuit cases on patent-eligible subject matter
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
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 AIA, 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; and Applications In Internet Time, LLC v. RPX Corporation, where the court instructed the PTAB 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
And more.