Tech Transfer Central
University-Industry Engagement Advisor

Electronic and Software Patents: Law and Practice, Fourth Edition with 2017 Supplement

Published by Bloomberg BNA
By Steven W. Lundberg, Stephen C. Durant, and Ann McCrackin, Editors-in-Chief
Publication Date: 2017
1,418+ pages

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Price: $560 + S&H
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Electronic and Software Patents: Law and PracticeA focused, practical reference designed to help practitioners draft, prosecute, and manage a strong portfolio of electronic and technology patents.

This step-by-step strategy guide helps practitioners deal with today’s lightning-paced technological developments, changes in USPTO policy, and pivotal court rulings. In addition the Fourth Edition of Electronic and Software Patents includes perspectives and tactics, including guidance on tough decisions regarding patent protection, prior art, strategy, and drafting claims; lessons on preparing computer-related patent applications; insights on drafting with the appropriate scope; practice “tips and traps” for each step of the patent prosecution process; international drafting and prosecution strategies for Japan, the United States, and Europe, and where to file first; working with business method patents and design patents; in-house patent portfolio development; noninfringment and invalidity opinions; design-around techniques, and litigation of software patents.

New in the Fourth Edition:

  • Expanded discussion of patent eligibility after Alice, including decisions by the Federal Circuit striking down business, financial, or entrepreneurial inventions as patent-ineligible
  • New discussion of claims interpretation in inter partes review and other post-grant proceedings for patent drafters following Cuozzo, in which the Supreme Court upheld the Patent Office’s regulation that the “broadest reasonable interpretation” standard applies to claims considered during inter partes review
  • Discussion of enhanced damages under the Patent Act after the Supreme Court’s decision in Halo Electronics
  • Detailed guidance on conducting successful interviews after the patent application is filed
  • Expanded discussion of patent infringement and recent case law
  • Analysis of the impact of the Defend Trade Secrets Act, which went into effect on May 11, 2016
  • And more

New in the 2017 Supplement:

  • The Supreme Court’s decision in Samsung Electronics Co., Ltd. v. Apple Inc., assessing monetary damages for infringement of a design patent, holding that a component of a product can embody a design just as easily as a complete product purchasable by a consumer, but declining to provide a test for determining whether a complete product or a component of that product embodies a given design
  • The Supreme Court’s ruling in Life Technologies Corp. et al. v. Promega Corp. addressing whether supply of a single component of a multicomponent invention can give rise to liability under §271(f)(1), and concluding that it required more than a single component
  • Federal Circuit decisions upholding patent claims as patent eligible in Enfish, LLC v. Microsoft Corp.BASCOM Global Internet Services, Inc. v. AT&T Mobility LLCMcRO, Inc. v. Bandai Namco Games America, Inc.Amdocs (Israel) Ltd. v. Openet Telecom, Inc., and Thales Visionix Inc. v. United States, and more
  • The Fifth Circuit’s decision in GlobeRanger Corp. v. Software AG that the Texas trade secret misappropriation law was not preempted by the Copyright Act
  • The Federal Circuit ruling in Apple, Inc. v. Ameranth, Inc. that found claims directed to software for generating a second menu from a first menu by allowing selection of categories and items to be patent ineligible
  • The Federal Circuit’s ruling in Avid Tech., Inc. v. Harmonic, Inc., which offered guidance on the level of disclaimer needed to be “clear and unmistakable”
  • Discussion of all precedential Federal Circuit cases involving computer-related technologies since Bilski and Alice, through mid-2017
  • Guidance from the Federal Circuit in GNPE Corp. v. Apple Inc., underscoring the importance of carefully drafting the specification to avoid blanket statements about “the invention”, which can serve to narrow the scope of seemingly broad claims
  • USPTO guidance published in December 2016 providing additional business method examples for use in conjunction with the 2014 Interim Guidance
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