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Vol 21 No 10 Oct/Nov 2016

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U.S. Patent Prosecutor's Desk Reference 2013 ed isbn 9780199975013

U.S. Patent Prosecutor's Desk Reference 2012 ed

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ISBN13: 9780199926688
New Edition ISBN: 0199975019
Previous Edition ISBN: 9780199740628
Published: August 2012
Publisher: Oxford University Press USA
Country of Publication: USA
Format: Paperback
Price: Out of print



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 and Board 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 (http://www.usppdr.com) This desk reference cites five different authority sources: statutes that govern the granting of patents; 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.

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Subjects:
Other Jurisdictions , USA
Contents:
Introduction
Rejections and Responses
1000. 35 U.S.C.
101 Inventions patentable.
2000. 35 U.S.C.
102 Conditions for patentability; novelty and loss of right to patent.
3000. 35 U.S.C.
103 Conditions for patentability, non-obvious subject matter.
4000. 35 U.S.C.
112 Specification.
5000. Double Patenting
6000. 35 U.S.C.
171 Patents for design.
7000. 35 U.S.C.
251 Reissue of defective patents.
8000. Res Judicata
Statutes
Tables of Cases
Court of Appeals for the Federal Circuit
Court of Customs and Patent Appeals
Board of Patent Appeals and Interferences
Index