This book tells European practitioners not just about the framework of US patent law, but how it is applied. Far more than a revised update, this second edition is twice as valuable to European patent practitioners as the previous edition. This book covers most of the basic situations that occur in preparing and prosecuting US applications and enforcing US patents as well as some of the unusual situations. The author, drawing on her recent years at a US firm, has augmented each chapter with practical information--including lines of argumentation to overcome obviousness rejections--and added new chapters, as well as much more detail on petitions and appeals, post-grant proceedings, and litigation.

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.

This text provides an analysis of European patent law and procedure (including practice under the PCT) and examines the provisions and case-law of the European Patent Convention, the Patent Law Treaty, and Community Patent.

This volume assembles papers commissioned by the National Research Council's Board on Science, Technology, and Economic Policy (STEP) to inform judgments about the significant institutional and policy changes in the patent system made over the past two decades. The chapters fall into three areas. The first four chapters consider the determinants and effects of changes in patent "quality." Quality refers to whether patents issued by the U.S. Patent and Trademark Office (USPTO) meet the statutory standards of patentability, including novelty, nonobviousness, and utility. The fifth and sixth chapters consider the growth in patent litigation, which may itself be a function of changes in the quality of contested patents. The final three chapters explore controversies associated with the extension of patents into new domains of technology, including biomedicine, software, and business methods.

The book is explaining in detail the current discussion regarding the unification of European patent law. It explains the current national legal practices in Europe, describing the legal and factual issues and the different approaches to achieve unification. The book manages to show the complex situation and the different opinions from the beginning of the discussion in a clear and comprehensive manner without requiring previous knowledge of the reader and is therefore to be recommended for everyone interested. Jochen Pagenberg, LL.M. Harvard, President EPLAW, Germany and Thomas Schachl, LL.M., Attorney-at-law, Germany In his detailed study, Stefan Luginbuehl critically examines the latest efforts to establish a common European and EU patent litigation system and suggests possible alternatives to such a system. Due to the lack of a European patent court, both the EPO and national judges interpret European patents and European patent law. This results in diverging interpretation across Europe and costly litigation for patent holders. Stefan Luginbuehl s proposals to promote the goal of a uniform interpretation of patent law and ease the difficulties are timely and highly insightful. Dealing with important legal and political issues related to European patent litigation and the establishment of a common patent litigation system, this book will appeal to practitioners, patent litigators, patent attorneys and judges specialised in patent litigation. Academics teaching and learning IP (patent law), private international law, or international civil procedure, will find this study interesting as the book deals with important aspects of national and international patent litigation, as well as procedural and structural questions related to the establishment of a patent court for Europe.

This concise introduction to European patent law and global patent perspectives combines the legal and economic perspectives to adopt a unique approach that serves both inventors -- engineers and scientists -- as well as financiers and economists. Written by experts with first-hand knowledge this book is completely up-to-date, taking into account recent additions to European patent law, especially in the field of biotechnology and genetics. While concentrating on the EU, the world perspective is nevertheless represented, including US particularities. The result is a set of guidelines allowing readers to develop a holistic patent strategy suitable for their specific needs. For scientists, engineers, managers and financiers in the chemical industry.