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Vol 23 No 5 May/June 2018

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This book is now Out of Print.
A new edition has been published, the details can be seen here:
US Patent Law for European Patent Professionals 2nd ed isbn 9789041194381

US Patent Law for European Patent Professionals

ISBN13: 9789041160447
New Edition ISBN: 9789041194381
Published: April 2015
Publisher: Kluwer Law International
Country of Publication: The Netherlands
Format: Hardback
Price: Out of print

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.

Intellectual Property Law, Other Jurisdictions , USA
Foreword by David Molnia
List of Tables
List of Figures
List of Abbreviations

PART 1 The Basics of US Patent Law
Chapter 1 Legal Codes Underlying the US Patent System
Chapter 2 Types of Patents and Corresponding Types of Applications
Chapter 3 Patentability: Requirements and Exceptions

PART II A Preparing and Filing a US Patent Application
Chapter 4 Drafting a Patent Application and Preparing to File
Chapter 5 Filing the Application and the Start of Prosecution
B Prosecution: Proceedings Up to Grant
Chapter 6 Examination: Responding to Office Actions
Chapter 7 Novelty as Defined in the US
Chapter 8 Inventiveness as Defined in the US
Chapter 9 What Is a Final Rejection and How to Respond
Chapter 10 Allowance and Issue
C Appeal
Chapter 11 Appeal Proceedings at the USPTO

PART III The US Patent and Post-grant Proceedings
Chapter 12 The US Patent and Protection Conferred
Chapter 13 USPTO Proceedings Corresponding to Opposition at the EPO.
Chapter 14 USPTO Proceedings Corresponding to Article 105a EPC (Requests for Limitation or Revocation)

PART IV Index of Procedural Elements
Chapter 15 Alphabetic Index of Procedural Elements
Chapter 16 Structure of the USPTO and the US Court System
Chapter 17 Careers in IP: USPTO Examiners and Types of US Legal Representative
Chapter 18 History of IP in the US Up to the AIA
Chapter 19 The America Invents Act
Chapter 20 Doctrines and Principles of US Patent Law

APPENDIX A.2 37 CFR, Part 1 (Rules of Practice in Patent Cases)
APPENDIX B.1 USPTO Patent Process Flowchart
APPENDIX B.2 Application Data Sheet
APPENDIX B.3 Information Disclosure Statement
APPENDIX B.4 Inventor’s Oath or Declaration
APPENDIX C Relevant Portions of the America Invents Act