Stocked with drafting checklists and sample drafting language, documents, and drawings, How to Write a Patent Application (3rd Edition) is a hands-on resource that equips readers to claim an invention with the sufficient breadth and required elements necessary for its validity to be sustained by courts. The book analyzes the latest USPTO initiatives, and key decisions of the federal courts, and provides the author’s practical suggestions and commentary.
Key updates in the new release include:
- Grounds for Requesting Expedited Examination: Added discussion of The Climate Change Mitigation Pilot program and how it impacts the examination of nonprovisional utility patent applications involving technologies that mitigate climate change by reducing greenhouse gas emissions (see section 2:9.2).
- Electronic Filing Document Format: Updated information about the PTO’s new format requirement for electronic filings (see section 3:5).
- Identifying the Inventor or Inventors: Elucidation of whether artificial intelligence systems qualify as inventors (see section 4:3).
- Abstract and Nonabstract ideas: Additional examples of both (see sections 7:4.1[B] and [C]).
- Statutory Requirements for Claims: Discussion of recent Federal Circuit cases related to the terms “resilient” and “pliable” and terms susceptible to more than one meaning (see section 8:2.1).
- Patentable Designs: News and statistics related to acquiring, defending, and enforcing design patents (see section 11:1.1).
- Written Description Requirement: Commentary on the high level of disclosure being required by the Federal Circuit to satisfy the written description requirement and the “troublesome” opinion in Biogen Int’l GmbH v. Mylan Pharm. Inc. (see section 17:4.2). For additional related discussion about the written description requirement, read also the recent PLI Chronicle article “Patent Antibody Case Law Continues to Mature.”
The Table of Authorities has also been updated.
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