Tech Transfer Central
Archer Norris

Patent Prosecution: Law, Practice, and Procedure, Eighth Edition, with 2014 Supplement

Published by Bloomberg BNA
By Irah H. Donner
Format: Hardcover with Case Digest on CD-ROM
Publication Date: 2014
5,600 pages

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Price: $610 + S&H
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An invaluable reference for preparing and processing a patent application, protecting a client’s patent, or invalidating an infringing one.

Find essential analysis of over 45 decisions of the Supreme Court, the Federal Circuit, and the Board of Patent Appeals and Interferences. Also get explanations on prosecution rules from the U.S. Patent and Trademark Office and an element-by-element analysis of areas of law that form the basis of common PTO rejections and objections. 

The Eighth Edition covers many important cases, including the Supreme Court’s ruling in Mayo Collaborative Services v. Prometheus Laboratories, Inc., and discusses PTO guidelines that set forth a new procedure for examining subject matter eligibility in view of this decision. It also analyzes the second, 9-0, Supreme Court decision in Hyatt v. Kappos, allowing a patent applicant greater freedom to introduce new evidence to a district court. An accompanying searchable CD-ROM offers a comprehensive Cumulative Case Digest in HTML format.

The 2014 Supplement covers recent Supreme Court decisions in Association for Molecular Pathology v. Myriad Genetics Inc., which held that isolated deoxyribonucleic acid (DNA) is an unpatentable product of nature, while cDNA is a non-naturally occurring genetic sequence and is patent eligible. It also discusses the Patent Trial and Appeal Board’s holding In re Erol; the Act to Correct and Improve Certain Provisions of the Leahy-Smith America Invents Act; the Patent Law Treaties Implementation Act of 2012; and Patent Office Examination Guidelines for Implementing the First Inventor to File Provisions of the Leahy-Smith America Invents Act.

About the Publisher and Author

Technology Transfer Tactics is proud to partner with Bloomberg BNA to bring our customers access to this comprehensive and authoritative resource. All Bloomberg BNA are written by respected experts with extensive experience in patent law and IP licensing. These renowned authors draw from their wealth of professional expertise and in-depth research to deliver the most highly regarded editorial quality in the industry.

The author of Patent Prosecution: Law, Practice, and Procedure is Irah Donner, a partner with Stroock law firm in New York. Mr. Donner specializes in patent prosecution, technology audits, intellectual property transactional due diligence, licensing, and litigation support. Named a New York Super Lawyer, Mr. Donner was also recognized in 2007 as one of the “Top Attorneys in the New York Metro Area” by The New York Times.

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