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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 Tenth Edition is updated to analyze and highlight the significance of recent Supreme Court cases on patent issues such as the review standard for Inter Partes Review (IPR) and a more flexible approach to award enhanced damages for egregious litigation misconduct.
It highlights Federal Circuit decisions on patent issues, including various cases examining procedures under the America Invents Act (AIA), the on sale bar, disavowal of claim scope through disparagement, cases on patent eligible subject matter, and the use of common sense in an obviousness rejection.
The Tenth Edition adds discussion of:
The accompanying searchable electronic appendix updated for the Tenth Edition offers a comprehensive Cumulative Case Digest with an extensive compilation of precedential language, organized by specific issue, in favor of patentability.
The 2018 Supplement adds discussion of:
Skedco, Inc. v. Strategic Operations, Inc., where the Federal Circuit held that claims are not generally limited to inventions looking like embodiments in the drawings
Aylus 2 Networks, Inc. v. Apple Inc., where the Federal Circuit held that statements made by a patent owner during inter partes review can support a finding of prosecution disclaimer and narrow the scope of the claims
Cardiaq Valve Technologies, Inc. v. Neovasc Inc., in which the Federal Circuit held the mere contribution of public knowledge, which could have been easily obtained by the named inventor, does not make one a co-inventor.
Several Federal Circuit cases on patent eligible subject matter, including Amdocs (Israel) Limited v. Openet Telecom, Inc., where the Federal Circuit held a system for monitoring activity on computer networks and creating records of it was patent eligible
Ex parte McAward, where in a precedential opinion, the Patent Trial and Appeal Board (Board) confirmed that for ex parte patent prosecution it will not use the U.S. Supreme Court's Nautilus Inc. v. Biosig Instruments Inc.standard, but will determine that a claim is indefinite if it uses words or phrases that are unclear
In re Chudik, where the Federal Circuit held that a prior art reference that must be distorted from its obvious design does not anticipate a patent claim
In re: Van Os, where the Federal Circuit held that that it is not enough for the Patent Trial and Appeal Board (Board) to provide the conclusory statement that the claimed invention would have been “common sense” or “intuitive” as the reason to combine or modify the prior art
Skky, Inc. v. Mindgeek, S.A.R.L., where the Federal Circuit held that the claim phrase “wireless device means" was not a means-plus-function element when the phrase signified structure, there was no function recited in connection with this phrase, and the claim was in method format
Several Federal Circuit decisions interpreting the America Invents act (AIA) statute including In re Aqua Products Inc., where the en banc Federal Circuit, in a 6-5 vote rejected the Board placing the burden of persuasion on the patent owner for substitute claims
Rembrandt Wireless Technologies LP v. Samsung Electronics Co., Ltd., where the Federal Circuit held that a disclaimer of a claim cannot serve to retroactively dissolve the marking requirement for a patentee to collect pre-notice damages under 35 U.S.C. § 287(a).
Amgen Inc. v. Sanofi, Aventisub LLC, where the Federal Circuit held that although enablement of a claimed invention is evaluated at the priority date, post-priority-date evidence may be relevant to determine enablement and written description at the time of the priority date
Guidelines describing how the Patent Office will handle ex parte reviews and reexaminations that are remanded back to the Board from the Federal Circuit
Perfect Surgical Techniques v. Olympus America, Inc., where the Federal Circuit clarified the requirements for diligence for patent applications filed before March 16, 2013 under the first-to-invent system. Specifically, the court held that to show diligence the inventor need only prove there was reasonably continuous diligence
The accompanying searchable online appendix updated for the 2018 Supplement offers a comprehensive Cumulative Case Digest with an extensive compilation of precedential language, organized by specific issue, in favor of patentability.
“Irah’s thorough work … addresses both the law and the practice, making it an ideal guide for those working in the patent system on a day-to-day basis.”
former Director, U.S. Patent and Trademark Office (from the Foreword)
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