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United States patent law, like the European Patent Convention (EPC), is based on a hierarchical code of statutes, regulations and administrative guidelines. However, there are numerous important distinctions, knowledge of which is crucial to successfully protect and leverage intellectual property in the United States. In this highly practical, one-of-a-kind book, European patent professionals will find, detail by detail, exactly what is required at every stage of a patent proceedings in the United States. Using a directly comparative presentation, the coverage includes such details of patent law and procedure as the following: drafting applications and filing them at the US Patent Office; provisions of the America Invents Act of 2011; possible responses to a Final Office Action; US definitions of novelty and inventiveness; types of patents recognized in the United States; structure of the US Patent Office and the US court system; variations in the definitions of basic patentability criteria; types of US post-grant proceedings and third-party submissions; appeal proceedings at the US Patent and Trademark Office; inventor's oath; foreign filing license; cost and time periods for various procedural acts; the work of US patent attorneys, agents and examiners; uses of the US Manual of Patent Examination Procedure (MPEP); and the US provisional application procedure. Every step in the process is described and directly compared as it operates under both the EPC and US patent law. There is no other available source of such instantly accessible information for European patent lawyers, in-house counsel, or EPC or national patent office officials, to all of whom this book will be of immeasurable value and usefulness. Intellectual property law academics and students will also benefit from the book's rigorous comparative approach."
Patent opinions and evaluations are used in virtually all endeavors involving United States patents, including litigation, prosecution, licensing, product design, product launch, evaluation for acquisition or disposition of intellectual property, bankruptcy, and U.S. securities issues. In U.S. Patent Opinions and Evaluations, David Fox provides expert, up-to-date, practical advice and guidance on the four principle issues of patent opinions and evaluations: claim construction and claim scope, infringement, validity, and enforceability. This second edition features a first-of-its-kind discussion of opinions of non-willful infringement based on the Seagate two-prong test for objective willfulness and an evaluation of the test, including analyses of Federal Circuit decisions applying the test. The case law, including Bilski and developments in indirect and joint infringement, has been completely updated, along with effects on willfulness, including updates related to the America Invents Act of 2011. Finally, the book has been restructured for easier use by attorneys preparing opinions and for those relying on these opinions. David L. Fox masterfully addresses the needs of the practicing attorney preparing a patent opinion, combining discussions and the framework of the current law with specific practice tips. He also provides clear, straight-forward guidance for non-patent professionals on the principles of U.S. patent law and the fundamentals of U.S. patent opinions and evaluations, allowing them to better understand and rely on them. U.S. Patent Opinions and Evaluations covers everything from general issues--including overviews of opinions, rules for preparing competent opinions, and waiver to nuts-and-bolts issues such as claim construction and claim scope, infringement, validity, and enforceability. The "Practice Tips" and the appendices provide further practical guidance by setting forth exemplary outlines of opinions and evaluations. A subject index enables quick and easy use of the book as a reference for specific topics.
SpringerBriefs in Biotech Patents presents timely reports on intellectual properties (IP) issues and patent aspects in the field of biotechnology. This volume focus on particular aspects of the US patent law, which can have tremendous differences compared to the European law. This includes questions of biopatent prosecution, novelty, inventive step, written disclosure and sufficiency of enablement as well as questions of law enforcement of biotech patents.
Germanyand’s patent system presents unique opportunities and risks for companies doing business abroad. It is one of the worldand’s top jurisdictions for patent enforcement because of the size of the German market, the speed and cost of the proceedings, the expertise and reputation of the judges, and its advantageous and“split systemand” that resolves infringement separately from validity challenges. Either as a stand-alone enforcement venue, or as part of a global IP strategy, Germany should be at the forefront of companiesand’ intellectual property plans. This handbook provides attorneys worldwide both the fundamental framework and practical pointers for navigating Germanyand’s patent system. The book opens with an overview of the judicial system, along with a background on patent prosecution and opposition proceedings in the European Patent Office. The handbook then explains key aspects of patent litigation in Germany, including: Trial procedure; Claim construction; Damages; Nullity (invalidity) proceedings; Discovery; Customs enforcement actions; Employment law regarding inventions; and Budgeting of patent cases. The book also provides forms and legislative materials, including translations (unofficial) of key intellectual property provisions, such as of the German Patent Act, Utility Model Act and the Act on Employeeand’s Inventions. Authored by active patent litigators in Germany and the United States, this handbook explains the German system in the context of U.S. proceedings, and concludes with a comparison of key provisions of the U.S. and German patent systems. For in-house counsel, as well as for seasoned international litigators, this handbook offers valuable lessons for patent procurement, enforcement, and defense.
'The book illustrates, in a very instructive manner, the proceedings before the European Patent Office (EPO), specifically with regard to opposition and appeal procedures. It guides the reader on what to avoid when drafting and prosecuting European patent applications, and will help practitioners, both in industry and in the legal profession, to take appropriate account of the most recent case law developments of the EPO with regard to opposition and appeal proceedings.'- Heinz Goddar, University of Bremen, GermanyExperienced practitioners will find that the detailed case law citation adds depth to their knowledge. The practical advice and the illustrations from case law provide patent lawyers and patent attorneys with invaluable guidance on specific procedural and substantive questions, and on how to act properly in opposition and appeal proceedings. Proceedings Before the European Patent Office: A Practical Guide to Success in Opposition and Appeal is an indispensable tool in the armoury of all patent practitioners.
The editor of Patent Law and Theory must be congratulated for assembling a concentration of sheer patent law erudition and scholarship. The title is a noteworthy compilation of 26 well-written, remarkably accessible and thought-provoking essays that goes to great lengths in charting the contours of contemporary thought over the the world s oldest regularly established property right . . . it manages to accomplish an ambitious endeavour of providing a comprehensive view of prevailing issues in the field of patent law and other related fields. . . the interested patent law reader will have much to gain from the fecund material found in the large majority of the title s essays. The world s corpus of patent law research is richer with the publication of this title. John A. Tessensohn, European Intellectual Property Review This major Handbook provides a comprehensive research source for patent protection in three major jurisdictions: the United States, Europe and Japan. Leading patent scholars and practitioners join together to give an innovative comparative analysis both of fundamental issues such as patentability, examination procedure and the scope of patent protection, and current issues such as patent protection for industry standards, computer software and business methods. Keeping in mind the important goal of world harmonization, the contributing authors challenge current systems and propose necessary changes for promoting innovation. Providing useful tips for practitioners to protect their intellectual assets in technologies effectively in the global market, this Handbook will be of great interest to legal scholars and students, as well as lawyers and patent attorneys.

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