The third edition of How to Write a Patent Applicationwalks you step-by-step through the entire process of preparing patent applications.  Completely up-to-date, it is stocked with sample drafting language, documents, drawings, and checklists.  In addition to providing practical suggestions and commentary, the book analyzes the latest USPTO initiatives and key decisions of the federal courts.

New or updated topics addressed in this release include:

• Assignments: For a discussion of (1) the extent to which an employer can rely on an assignment clause to assert an ownership interest in a patent that was obtained after employment and (2) how to make an assignment effective for the doctrine of assignor estoppel, see section 2:3.3.
• Translations: For an example of the indefiniteness issues that translation into English can create and ways to avoid a finding of invalidity due to mistranslation, see sections 2:8 and 8:6.4.
• Abstract ideas: New examples of inventions that the Federal Circuit held were abstract ideas have been added to section 7:4.1[B]. A recommendation for drafting specifications and claims for inventions using blockchain technology to avoid abstractness is included in section 7:4.6.
• Enablement: To see how the use of functional language can make satisfaction of the enablement test more difficult, especially for biotech inventions, see sections 8:3.5[A] and 9:3.2[A]. What’s more, the need to clearly distinguish between prophetic examples that describe predicted experimental results and working examples is explained in section 9:3.2.
• Appendix B (selected regulations), the Table of Authorities, and the Index have also been updated.

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