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

Published by Bloomberg BNA
By Irah H. Donner
Format: Hardcover with Case Digest on CD-ROM
Publication Date: 2015
6,300 pages

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Price: $615 + S&H
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The NEW 9th Edition covers the enormous changes brought on by the Leahy-Smith America Invents Act (AIA) and includes searchable electronic appendices with a comprehensive, cumulative case digest.

In the new 9th Edition of Patent Prosecution: Law, Practice, and Procedure, you’ll find in-depth coverage on significant changes in patent law resulting from decisions of the Supreme Court, the Federal Circuit, and the Patent Trial Appeal Board. This new edition places new substantive discussions in context with existing patent laws and regulations. You’ll also save valuable time and precious resources with the in-depth analysis of prosecution rules from the U.S. Patent and Trademark Office.

Patent Prosecution: Law, Practice, and Procedure, Ninth Edition is the only resource that gives you an element-by-element analysis of patent law areas that trigger rejections and objections by the USPTO. Utilizing years of research and practical experience, the author classifies a wide variety of PTO rejections and provides you with proven response strategies.


“To say that Patent Prosecution is a comprehensive resource both for experienced patent practitioners, as well as new aspirants, is an understatement.”

David J. Kappos,
Partner, Cravath, Swaine & Moore LLP
Former Under Secretary of Commerce and Director of the United States Patent and Trademark Office

This 9th Edition is updated to analyze and highlight the significance of recent cases such as the Supreme Court decisions in Limelight Networks, Inc. v. Akamai Technologies, Inc.Alice Corp. Pty. Ltd. v. CLS Bank Int’l; Nautilus, Inc. v. Biosig Instruments, Inc.; and Association for Molecular Pathology v. Myriad Genetics Inc.

This new edition also analyzes the Federal Circuit decisions in Novartis AG et al. v. LeeOracle America Inc. v. Google Inc.In re Biedermann; Ring & Pinion Service Inc. v. ARB Corp. Ltd.Troy v. Samson Manufacturing Corp.In re Roslin Institute (Edinburgh); and more.

The Ninth Edition also covers PTO rules and guidance including:

  • “2014 Interim Guidance on Patent Subject Matter Eligibility” under §101 afterAliceMyriad, and 
  • “Examination Guidelines for Implementing the First Inventor to File Provisions of the Leahy-Smith America Invents Act” providing for the submission of affidavits or declarations to overcome prior art.


Patent Prosecution: Law, Practice, and Procedure, 9th Edition includes accompanying searchable electronic appendices and comprehensive Cumulative Case Digest with an extensive compilation of precedential language, organized by specific issue, in favor of patentability – giving you fast access to a powerful tool for crafting claims and ensuring patent prosecution affords optimal protection.

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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