Patent Treatise Sale Through April 8, 2009

By Gene Quinn
March 24, 2009

I realize this is a plug from the shameless commerce division, but when the top patent treatises are on sale it deserves mention, particularly when the treatises are being sold by a sponsor of  PLI’s outstanding patent law treatises provide comprehensive, up-to-date legal information and guidance, and they are available at a 20% discount if you order any of the titles below by April 8, 2009.

PATENT LAW, PATENT LITIGATION, and the 2008 FEDERAL CIRCUIT YEARBOOK, gives you a solid grounding in fundamental legal and litigation issues, including seminal doctrines, while helping you to stay up to speed with case law developments that can subtly or starkly change the law and the way you represent clients as an adviser, enabler, and litigator.

FABER ON MECHANICS OF PATENT CLAIM DRAFTING and HOW TO WRITE A PATENT APPLICATION are as practical, sensible, and essential as their titles indicate, bringing you the experienced step-by-step instruction and advice.  HOW TO WRITE A PATENT APPLICATION has also just been updated as of March 2009 and now includes discussion of the following topics:

  • In re Bilski: The Federal Circuit in In re Bilski provides its latest test for patentable subject matter of a process: a process is patent-eligible under 35 U.S.C. § 101 if (1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state. Analyzing the case, the author notes that the CAFC does not answer the question whether the first alternative is satisfied by citation of a general purpose computer, or rather requires some other machine or apparatus; then states guidelines for the application of the transformation alternative; and extracts twelve basic principles from the court’s opinion. See new § 12.2.1. The Board of Patent Appeals and Interferences has begun to apply Bilski, taking what the author calls a “stringent” view of the ruling. Several BPAI decisions are discussed. See new § 12.2.2. And the author offers some suggestions for satisfying the Bilski test. See new § 12.2.3.
  • Patent Prosecution Highway: This PTO program for fast-tracking claims found patentable in certain other countries also extends to Singapore, the European Patent Office, and Denmark. See § 2.10.
  • Identifying the inventors: A general point to keep in mind when identifying the inventors and drafting the claims is that each owner of a patent will have the right to license the patent and practice the patented invention; accordingly, it will sometimes make sense to divide up an invention into two applications. See § 3.3.
    Novelty search: Sample letter to client reporting “neutral” results of patentability study, that is, the invention is novel but there is only a 50/50 chance of persuading the PTO that the invention is unobvious. See new Exhibit 4-5.
  • Indefiniteness: Federal Circuit’s Star Scientific case restates the standard for indefiniteness, noting that only a claim not amenable to construction will be indefinite, however difficult that construction may be. But the PTO applies a different standard during the examination of a patent: if a claim is amenable to two or more plausible constructions, the PTO is justified in requiring the applicant to more precisely define the metes and bounds of the invention to avoid a rejection for indefiniteness. See § 6.2.1.
  • “About” in claims: Federal Circuit’s Cohesive Technologies notes how the use of “about” can preclude use of the doctrine of equivalents as to the limitation for which “about” is used. See § 6.5.12, at note 162.1.
  • Design patents: To find infringement of a design patent, the courts apply the “ordinary observer” test, as described in the Federal Circuit’s Egyptian Goddess case. See § 9.1.4.
  • Biotechnology inventions-written description requirement: A problem commonly arises when there is a claim to a broad genus, but only a single species is disclosed. To satisfy the written description requirement for a claimed genus, the specification must describe the claimed invention in such a way that a person skilled in the art would understand that the genus that is being claimed has been invented, and not just the species of the genus. See § 14.4.2.
  • Disclosure of nucleotide or amino acid sequences: It is possible to submit nucleotide or amino acid sequence listings as an ASCII-compliant text file, if certain requirements are met. Submitted electronically, the ASCII-compliant text file serves as both the paper copy and the computer-readable form required by the regulations. See § 14.4.6, at note 80.1.

PLI also features two recent additions to its patent law library that focus on some of the fastest-growing sectors of the law – PHARMACEUTICAL AND BIOTECH PATENT LAW and A PRACTICAL GUIDE TO LIFE SCIENCE COMPANIES.

These treatises enhance your ability to help companies obtain and defend their patents, while providing insight into how entrepreneurs can use their patent portfolios to grow their enterprises and achieve greater commercial success.

One important way they can make that happen is through effective licensing, a subject fully examined in PATENT LICENSING, which shows you how to draft solid licensing agreements that advance clients’ financial interests.

If you prefer to order by phone, please call PLI’s Customer Relations Department at (800) 260-4754. If you order by phone, be sure to mention your Priority Code: PWX9-8AEM1.

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and President & CEO ofIPWatchdog, Inc.. Gene founded in 1999. Gene is also a principal lecturer in the PLI Patent Bar Review Course and Of Counsel to the law firm of Berenato & White, LLC. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of Read more.

Discuss this

There are currently No Comments comments.