Professor Folsom: Patents

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 L. Fox provides expert, up-to-date, practical advice and guidance on the four principle issues of patent opinions and evaluations: claim construction and claimscope, infringement, validity, and enforceability. The second edition of this comprehensive book features a first-of-its-kind discussion of opinions of non-willful infringement based on the Seagate two-prong test for objective willfulness, including an analysis of the test and the Federal Circuit decisions that have applied it. The case law, including Bilski, and developments in indirect and joint infringement, has been completely updated, along with effects on willfulness. This new edition of U.S. Patent Opinions and Evaluations has also been restructured for easier use by attorneys preparing opinions and 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.

Patent prosecution is more than drafting patents - it is also advocating patentability. The challenge that each patent prosecutor be an effective draftsman and advocate is compounded by mounting pressure to procure high quality patents at minimum cost. There is a need for a quick, reliable reference to assist prosecutors in creating, researching, and supporting patentability arguments. In the U.S. Patent Prosecutor's Desk Reference, Joshua P. Graham and Thomas G. Marlow assist patent prosecutors in responding to Office Actions issued by the United States Patent and Trademark Office (USPTO) rejecting patent application claims. It provides a comprehensive and updated source of law, organized by sections corresponding to the types of rejections made by the USPTO. Each section of this reference work includes the basis for the rejection, responses to the rejection, and legal authority supporting the responses. This 2012 Edition includes all cases from the Federal Circuit andBoard of Patent Appeals through December 31, 2011, and is updated with: -Federal Circuit and Board of Patent Appeals and Interferences opinions issued in 2011 -A focus on precedential and informative opinions from the Board of Patent Appeals and Interferences -A new section on rejections under 35 U.S.C. 251 based on the recapture rule -Full text of cited sources available at www.usppdr.com This desk reference cites five different authority sources: statutes that govern the granting ofpatents; the Manual of Patent Examining Procedure, Eighth Edition, which dictates how examiners determine whether a patent application should be allowed; decisions by the Board of Patent Appeals and Interferences, which is the administrative body of the U.S. Patent and Trademark Office that reviews decisions made by the examiners; the U.S. Court of Customs and Patent Appeals, which was the body that reviewed decisions made by the Board of Patent Appeals and Interferences until the Federal Circuit came into existence in 1982; the U.S. Court of Appeals for the Federal Circuit, which reviews decisions made by the Board of Patent Appeals and Interferences. The U.S. Patent Prosecutor's Desk Reference provides a comprehensive and reliable guide for prosecutors who create, research, and support patentability arguments. Discussions of the decisions made by the Board of Patent Appeals and Interferences, the U.S. Court of Customs and Patent Appeals, and the U.S. Court of Appeals for the Federal Circuit generally have four parts: Technology Area, Quotable Language, Rejection Response, and Relevant Facts.

Scientific and technological innovations are forcing patent law into the spotlight and revealing its many glaring inadequacies. Take, for example, the patent case that almost shut down the BlackBerry, or the growing phenomenon of patent trolling, in which patents are acquired for the sole purpose of entrapping companies whose products relate to them. And patents on genes have everyone up in armsâe"and our courts confused. Robin Feldman explains why patents are causing so much trouble. The problem lies in our assumption that patents set clear boundaries for rights to an invention. In reality, they do no such thing. The very nature of inventions makes them impossible to describe unambiguously for all time. When something is so new that we do not understand yet how it works, what it is capable of doing, or how it could be appliedâe"as is often the case in biotechnologyâe"description is necessarily slippery. Instead of hoping for clear boundaries, and moaning when we donâe(tm)t get them, Rethinking Patent Law urges lawmakers to focus on what the law can do well: craft rules that anticipate the bargaining that will occur as rights unfold. By steering clear of laws that distort the bargaining process, lawmakers can help courts answer difficult questions, such as whether genes, software, and business methods constitute patentable subject matter, whether patents in the life sciences should control inventions that have yet to be discovered, and how to resolve the battles between pharmaceutical companies and generics.

In its 2010 decision in Bilski v. Kappos, the U.S. Supreme Court redefined patentable subject matter for business methods and computer software, but did so without imposing definitive tests and definitions, effectively leaving such guidance for future court decisions and the United States Patent and Trademark Office (USPTO). As a result, the law is essentially being written at present, and will continue to be written and narrowed over the next decade. Business Method and Software Patents addresses the drafting of business-method and software patents in the wake of Bilski v. Kappos. Morgan Rosenberg and Richard Apley offer a review and analysis of all relevant case law and guidelines presented by the United States Patent and Trademark Office (USPTO). With the use of actual patents filed by the authors, this work provides practical information and guidance on the drafting of successful patent applications.

Experienced patent drafters have patents invalidated every day for reasons that are largely based on avoidable error. Rules of Patent Drafting: Guidelines from the Federal Circuit helps patent drafters avoid such errors by setting out and explaining the legal principles that govern patent prosecution, as set out by the Federal Circuit, the appellate division for all patent cases in the federal courts of the United States. The underlying theory of such an approach is that if one understands the rule - as distilled from the relevant Federal Circuit cases - one will also understand the law. Rules of Patent Drafting: Guidelines from the Federal Circuit is broken down according to these rules, each of which will be explained and presented along with the exact language judges have used to describe it. In addition, there is a supplemental section on writing, which though not specifically addressed by the Federal Circuit, is a topic that lends itself quite naturally to the presentation of the rules in question.

In The Corporate Insider's Guide to U.S. Patent Practice, Charles Macedo provides practitioners with a compact and accessible guide to the essentials of patent practice. Book jacket.

Patent opinions and evaluations are used in virtually all endeavors involving U.S. patents, including litigation, prosecution, licensing, product design, product launch, evaluation for acquisition or disposition of intellectual property, bankruptcy, and U.S. securities issues. U.S. Patent Opinions and Evaluations provides practice-oriented, complete, and up-to-date guidance for those preparing such opinions and evaluations, as well as guidance for non-U.S. patent practitioners who must understand and rely on these opinions and evaluations. Author David Fox squarely 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, straightforward 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 understand and rely on these important opinions and evaluations. 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,

We have long considered inventing to be a uniquely human activity. But just as the assembly line automated the process of manufacturing, today's computers are automating the process of inventing. Software can automatically generate designs for everything from toothbrushes to antennas to automobile frames more quickly and inexpensively than ever before, thereby ushering in a new era of artificial invention. Inventors will use artificial invention technology to boost their inventive abilities to previously undreamed-of heights, enabling small teams of inventors to compete with mega-corporations who insist on inventing the old-fashioned way. Even consumers will be able to use artificial invention technology to become inventors themselves. We stand poised to see the emergence of the "digital renaissance artisan"—a person who will have the ability to not only design new inventions at the touch of a button, but also to manufacture them automatically from the comfort of home. As Robert Plotkin reveals in this landmark book, our decisions about these inventions today will dictate who gets to control this powerful technology tomorrow. Should inventions designed by software be patentable? Should the software that produces those designs be patentable? The Genie in the Machine offers the first-ever examination of the implications of artificial invention technology for patent law, the law of invention. Along with practical advice for inventors, high-tech companies, and patent lawyers, this forward-looking book provides concrete recommendations for reforming patent law in light of the growing importance of invention-automation technology.

Patent law is crucial to encourage technological innovation. But as the patent system currently stands, diverse industries from pharmaceuticals to software to semiconductors are all governed by the same rules even though they innovate very differently. The result is a crisis in the patent system, where patents calibrated to the needs of prescription drugs wreak havoc on information technologies and vice versa. According to Dan L. Burk and Mark A. Lemley in The Patent Crisis and How the Courts Can Solve It, courts should use the tools the patent system already gives them to treat patents in different industries differently. Industry tailoring is the only way to provide an appropriate level of incentive for each industry. Burk and Lemley illustrate the barriers to innovation created by the catch-all standards in the current system. Legal tools already present in the patent statute, they contend, offer a solution—courts can tailor patent law, through interpretations and applications, to suit the needs of various types of businesses. The Patent Crisis and How the Courts Can Solve It will be essential reading for those seeking to understand the nexus of economics, business, and law in the twenty-first century.

In recent years, business leaders, policymakers, and inventors have complained to the media and to Congress that today's patent system stifles innovation instead of fostering it. But like the infamous patent on the peanut butter and jelly sandwich, much of the cited evidence about the patent system is pure anecdote--making realistic policy formation difficult. Is the patent system fundamentally broken, or can it be fixed with a few modest reforms? Moving beyond rhetoric,Patent Failureprovides the first authoritative and comprehensive look at the economic performance of patents in forty years. James Bessen and Michael Meurer ask whether patents work well as property rights, and, if not, what institutional and legal reforms are necessary to make the patent system more effective.Patent Failurepresents a wide range of empirical evidence from history, law, and economics. The book's findings are stark and conclusive. While patents do provide incentives to invest in research, development, and commercialization, for most businesses today, patents fail to provide predictable property rights. Instead, they produce costly disputes and excessive litigation that outweigh positive incentives. Only in some sectors, such as the pharmaceutical industry, do patents act as advertised, with their benefits outweighing the related costs.By showing how the patent system has fallen short in providing predictable legal boundaries,Patent Failureserves as a call for change in institutions and laws. There are no simple solutions, but Bessen and Meurer's reform proposals need to be heard. The health and competitiveness of the nation's economy depend on it.

Advances in modern biotechnology have produced profound and far-reaching implications for the relationship between humans, animals and the environment. This book examines the role of moral considerations in the patent system as a form of regulation. It questions why in the context of biotechnological inventions morality has become an important issue.

Using judicial opinions from leading casebooks along with numerous hypotheticals and examples, this text illustrates the many challenging issues and innovative trends in patent law today. Sections on basics such as patent law norms, policy, and patent history build the conceptual foundation for explorations of claims, patent prosecution, and complex aspects of patent law. International treaties and conventions that impact innovators, litigators, and policymakers are also covered in this comprehensive text.

THE PROMISE OF A HOME, THE HEARTBREAK OF AN IMPOSSIBLE LOVE   As a budding journalist with a major newspaper, Remy McCallister is eager to prove herself. While investigating an unsolved crime, Remy winds up in the tightly woven Amish community of Lancaster County, the last place she would ever expect to find herself. The story leads her to Adam King and his ten younger siblings, who are trying to sustain their warm, loving home in the wake of the murder of their parents. Although Remy tries to remain professional, she is captivated by the Kings. With her own mother gone and her father disengaged from their relationship, Remy longs for a home and a family just like that of these good, simple people. Suddenly patriarch of his large family, Adam struggles to do the right thing for his siblings, his community, and his God. He neither wants nor needs the complications that spirited Remy brings. But as much as he tries to push her away, even as he counts all the ways this lovely outsider cannot possibly remain in his world--or in his heart--the wondrous light she shines upon his troubled soul cannot be denied. Adam can only pray for the strength and the faith to get this Englisher girl out of their lives for good. Snowbound with the Kings, Remy experiences the wonder and the chores of a simple winter among the Plain People, as well as the friendship of their warm community. When her peaceful interlude ends, does she dare to reveal a killer in their midst, knowing that she may lose the love of this special family and this remarkable man? From the Trade Paperback edition.