Category Archives: Intellectual Property

Treatise Update: Patent Law: A Practitioner’s Guide (Fourth Edition)

Patent Law: A Practitioner’s Guide (Fourth Edition)is a valuable guide for patent specialists and other intellectual property lawyers, corporate counsel and executives, inventors, and general practitioners representing inventors looking to gain knowledge of the legal framework governing patents. This includes developments under the America Invents Act, federal regulations and court decisions, the widely accepted four-step test used by the courts to determine an invention’s patentability, the various tests used to indicate direct infringement and other patent violations and drafting techniques used to prepare the full variety of documents, including specifications and claims.

The new release includes the following updates:

  • Section 1:7.1, Utility patent subject matter eligibility, discusses several Federal Circuit cases on section 101 eligibility including Weisner v. Google LLC, International Business Machines Corp. v. Zillow Group, Inc., and American Axle & Manufacturing v. Neapco Holdings.
  • Section 5:3.6, Statutory bars—disclosure, explores Mylan Pharmaceuticals Inc. v. Merck Sharp & Dohme Corp., in which the Federal Circuit considered whether prior disclosure of a genus of compounds and their pharmaceutically acceptable salts was sufficient to anticipate, under 35 U.S.C. §102, a claim directed to a species of a specific salt of a specific compound having a specific stoichiometric ratio.
  • Section 6:10.1, Unitary European patent, is a new section that reviews the unitary European patent and the now operative Unified Patent Court.
  • Section 24:6.1, Inter partes review, covers a Federal Circuit case considering whether applicant-admitted prior art could form the basis of invalidity in an IPR, and another case clarifying the scope of IPR estoppel under 35 U.S.C. § 315(e)(2).

The Tables of Authorities and Index have also been updated.

Order a print copy today.

PLI PLUS subscribers can access this title through their subscription

Free Legal Form of the Month

PLI PLUS offers unlimited electronic access to more than 4,500 downloadable, searchable, and editable legal forms ready for use in your practice. In an effort to highlight this unique content type, we’ve selected one form per month and made it available for anyone to download for free – no subscription required.

October’s free form:

Sample Discovery Confidentiality Order Regarding Trade Secrets

More information about Legal Forms & Checklists:

  • Forms & Checklists Flyer – This flyer provides an overview of the forms & checklists on PLI PLUS and highlights a handful of popular examples.
  •  Popular PLUS Forms – This flyer provides a list of the top five most downloaded forms in prominent practice areas on PLI PLUS.

Send us an email at plus@pli.edu to learn more.

Free Legal Form of the Month

PLI PLUS offers unlimited electronic access to more than 4,500 downloadable, searchable, and editable legal forms ready for use in your practice. In an effort to highlight this unique content type, we’ve selected one form per month and made it available for anyone to download for free – no subscription required.

September’s free form:

Patent License Agreement

More information about Legal Forms & Checklists:

  • Forms & Checklists Flyer – This flyer provides an overview of the forms & checklists on PLI PLUS and highlights a handful of popular examples.
  •  Popular PLUS Forms – This flyer provides a list of the top five most downloaded forms in prominent practice areas on PLI PLUS.

Send us an email at plus@pli.edu to learn more.

Most Popular Books on PLI PLUS So Far This Year!

The tallies are in! Here are the books PLI PLUS users are accessing the most in 2024 so far…

Popular Banking Titles

  1. Asset-Based Lending: A Practical Guide to Secured Financing
  2. Financial Product Fundamentals: Law, Business, Compliance
  3. Fund Finance
  4. Consumer Financial Services Answer Book
  5. Coping with U.S. Export Controls and Sanctions

Popular Corporate & Securities Titles

  1. Private Equity Funds: Formation and Operation
  2. Broker-Dealer Regulation
  3. Drafting and Negotiating Corporate Agreements
  4. Corporate Compliance Answer Book
  5. Acquiring or Selling the Privately Held Company

Popular Employment Titles

  1. Fragomen on Immigration Fundamentals: A Guide to Law and Practice
  2. Understanding Employment Law
  3. Employment Law Institute
  4. Wage & Hour Litigation and Compliance
  5. California Employment Law

Popular Estates & Trusts Titles

  1. Art Law: The Guide for Collectors, Investors, Dealers & Artists
  2. Manning on Estate Planning
  3. Blattmachr on Income Taxation of Estates and Trusts
  4. Annual Estate Planning Institute
  5. Private Clients Legal & Tax Planning Answer Book

Popular Intellectual Property Titles

  1. Artificial Intelligence Law
  2. How to Write a Patent Application
  3. Patent Law: A Practitioner’s Guide
  4. Faber & Kowalski on Mechanics of Patent Claim Drafting
  5. Intellectual Property Law Answer Book

Popular Litigation Titles

  1. Thinking Like a Writer: A Lawyer’s Guide to Effective Writing and Editing
  2. Stepping It Up: A Guide for Mid-Level Law Firm Associates
  3. Fundamentals of Taking and Defending Depositions
  4. Attorney-Client Privilege Answer Book
  5. Trial by Jury

Popular Real Estate Titles

  1. Annual Real Estate Tax Forum
  2. Friedman and Smith on Contracts and Conveyances of Real Property
  3. Annual Commercial Real Estate Institute
  4. Commercial Ground Leases
  5. Holtzschue on Real Estate Contracts and Closings: A Step-by-Step Guide to Buying and Selling Real Estate

Popular Tax Titles

  1. The Partnership Tax Practice Series: Planning for Domestic and Foreign Partnerships, LLCs, Joint Ventures & Other Strategic Alliances
  2. Tax Planning for Domestic & Foreign Partnerships, LLCs, Joint Ventures & Other Strategic Alliances
  3. Business Taxation Deskbook: Corporations, Partnerships, Subchapter S, and International
  4. Tax Strategies for Corporate Acquisitions, Dispositions, Spin-Offs, Joint Ventures, Financings, Reorganizations & Restructurings
  5. Transfer Pricing Answer Book

Download a PDF flyer of this post to share with colleagues: Popular Books on PLI PLUS. See also the Top 10 Most Popular Forms So Far in 2024.

Treatise Update – Patent Licensing and Selling: Strategy, Negotiation, Forms (Second Edition)

Patent Licensing and Selling guides practitioners through the fundamentals of drafting and structuring profitable patent licensing deals. Containing more than 350 sample agreements and clauses, the book provides actionable strategies to negotiate these deals. It also highlights terms that can trigger delays and disputes, strategies around exclusive licenses, and pointers for selecting markets for specific licensees. In addition, the text integrates discussion on infringement protection and enforcement steps, license duration and termination guidelines, and confidentiality considerations.

The new release includes revised and expanded coverage of the following topics:

  • Definitions: New sections 1:1.1 and 1:5.1[C] discuss the implications of failing to define a term, using the as term “affiliate” as an example and showing the need to uncover the identity of each affiliate (section 1:5.1[A]) and to determine whether an entity qualifies as an affiliate (section 1:5.1[B]), as well as any limitations around the term (section 1:5.1[C]), the consequences of leaving the term “affiliate” undefined (section 1:5.1[D]), which edition of dictionary to use (section 1:5.1[E]), and the overall lessons to be learned (section 1:5.1[F]).
  • Additional future licenses: Inclusion of a sample pro­vision dealing with a situation in which the licensee discovers that he or she unknowingly developed products that infringed patents already owned by the licensor and that are not licensed to the licensee under the patent license agreement (see section 2:5.4).
  • Royalties: Added information on withholding taxes on royalty payments (see NEW section 4:9.8).
  • Prosecution and maintenance: Instruction on the consequences of a party’s decision to abandon prosecution and mainte­nance (see section 6:3.2[A]).
  • Licensee efforts: Extensive coverage of a licensee’s obligation to use “best efforts” and commercially reasonable efforts (see section 12:1.1 and section 12:6, respectively).
  • Technology license agreements: New coverage around licensing of oth­er intellectual property, such as trade secrets, confidential information, and know-how (see NEW Chapter 20).
  • New contract provisions: Examples 1:5B, 1:9, and 1:20 (Definition of affiliate); Example 1:41A (Choice of law); Example 1:51A (Commercially reasonable efforts); Example 2:53 (Additional future patent li­cense; licensee infringing licensor patents not licensed under the patent license agreement); Examples 4:55A, 4:55B, and 4:55C (Tax withholding); Example 5:10 (Audit; pay­ment for audit); and Example 6:6 (Notice of intent to abandon prosecution or maintenance of licensed patents).

The Table of Examples, Table of Authorities,and Index have also been updated.

Order a print copy today.

PLI PLUS subscribers can access this title through their subscription.

New Title! Commercial Legal Finance

PLI Press is proud to announce the publication of the new practice guide Commercial Legal Finance.

This book offers industry-specific guidance on the mechanics of litigation and arbitration finance in key jurisdictions and practice areas around the world.  It provides a wealth of applied use cases for law firms and corporations and addresses key questions concerned with legal finance structures, pricing, and ethical considerations. The book also gives a step-by-step overview of the process for obtaining legal finance and a helpful glossary of terms.

Notably, Commercial Legal Finance covers the following important topics:

  • The basics of commercial legal finance (see Chapter 1)
  • The role of the funder (see Chapter 2)
  • The mechanics and economics of funding (see Chapter 3)
  • The major ethical issues related to legal finance (see Chapter 4)
  • The financing of investor-state arbitration (see Chapter 5)
  • Key considerations for financing patent litigation and other intellectual property matters (see Chapter 6)    

In addition, the book devotes full chapters to the use of funding in the U.S. (Chapter 7), England and Wales (Chapter 8), Europe (Chapter 9), Asia (Chapter 10), and Australia (Chapter 11).

We are excited to share this new title with you!

PLUS Subscribers can access this title with their subscription.

Order a print copy today.

 Is your library interested in subscribing to PLI’s Standing Order Plan (SOP)? SOP subscribers automatically receive print copies of new titles to review upon release.  If you decide to keep the title, you will receive a discount up to 25% off the title and all future supplements. Call 877.900.5291 or email libraryrelations@pli.edu to learn more.

Treatise Update – Patent Litigation (Third Edition)

Patent Litigation (Third Edition) enhances every patent litigator’s ability to prevail at trial while helping to cut the costs and complexity of litigation. Written by leading patent litigators, the treatise provides guidance on various infringement actions and their respective burdens of proof.  It also offers pointers on conducting comprehensive pre-suit investigations; developing potent case themes; assembling strong litigation teams; developing smart budgets; maximizing the persuasive impact of documents, exhibits, and witnesses; and making savvy use of technology, jury consultants, and litigation support vendors.

Highlights of this release include updated discussion of the following topics:

  • Substantive Issues of a Patent Case: Defenses against patent validity, such as collateral estoppel and unadjudicated claims, applicant-admitted prior art, obviousness, and inadequately disclosed claims (see sections 1:3.3[B], 1:3.3[C], 1:3.3[F], and 1:3.3[H]) and, in the area of inequitable conduct before the PTO, the mitigation of nondisclosure of information through supplemental examination (see section 1:3.4[A][4]). 
  • Discovery and Privilege: Use of testimony from patent law experts (see section 4:4.4[C]).
  • Nondiscovery Motions and Court-Initiated Procedures: Markman proceedings and claim construction (see section 7:2). 
  • Witnesses Special to a Patent Case: Inventor testimony (see section 8:2.1[A]).
  • Damages and Attorney’s Fees: Consequences of the district court’s failure to address prejudgment interest (see section 9:10.1) and willfulness and enhanced damages (see section 9:11.1).
  • Trial: Rule 50(a) and Rule 50(b) motions (see sections 12:12.3 and 12:14); Rule 59 motions for a new trial and altering or amending the judgment (see new section 12:14.4); and Rule 60 proceedings for relief from judgment (see new section 12:14.5).

The Table of Authorities and Index have also been updated.

Order a print copy today. PLI PLUS subscribers can access this title through their subscription.

For additional recent developments in patent litigation, check out this recent PLI Chronicle article, PTAB’s Longhorn Decision Could Signal More USPTO OED Disciplinary Proceedings.

Treatise Update – Taxation of Intellectual Property: Law and Practice

Taxation of Intellectual Property covers the tax consequences of creating, buying, exploiting, and selling various intellectual property assets (including patents, trade secrets, copyrights, trademarks, and computer software), as well as the tax considerations affecting intellectual property litigation. It identifies the IP taxation fundamentals relevant to individuals, corporations, partnerships, and non-profits and includes in-depth coverage of the various deductions applicable to patent royalties, salaries of researchers, and infringement-related legal fees.

Some of the recent developments discussed in this new release include:

  • Alternative Minimum Tax (AMT) for Corporations: Coverage of the repeal of the AMT for corporations by the Tax Cuts and Jobs Act of 2017 (TCJA) and the subsequent updates to this by the Inflation Reduction Act of 2022 (see section 3:2.3).
  • Research or Experimental Expenditure Deductions: Discussion of the new 5-year capitalization and amortization rule imposed on research or experimental expenditures by the TCJA (see section 4:3).
  • Research Credit for Small Business and Start-Ups: Provides the increased amount of the credit that small businesses and start-ups can apply against their payroll tax liability pursuant to the Inflation Reduction Act of 2022 (see section 4:6).
  • Tax Treatment of NFTs: Answers the question of whether an NFT used in trade or business would qualify as a Section 1231 asset eligible for capital gains treatment (see section 6:3.5[A][1]).
  • Litigation Expenses: Extensive coverage of the Actavis Lab v. United States case which dealt with the issue of whether a generic drug manufacturer’s patent infringement litigation expenses were tax deductible  (see section 7:1.1[C]).
  • Charitable Contributions of Cryptocurrency: Explanation of the circumstances in which a qualified appraisal is required for charitable contributions of cryptocurrency (see section 9:4.4[A]).

Order a print copy today.

PLI PLUS subscribers can access this title through their subscription.

Free Legal Form of the Month

PLI PLUS offers unlimited electronic access to more than 4,500 downloadable, searchable, and editable legal forms ready for use in your practice. In an effort to highlight this unique content type, we’ve selected one form per month and made it available for anyone to download for free – no subscription required.

September’s free form:

Specimen Provisions from Patent License Agreements

More information about Legal Forms & Checklists:

  • Forms & Checklists Flyer – This flyer provides an overview of the forms & checklists on PLI PLUS and highlights a handful of popular examples.
  •  Popular PLUS Forms – This flyer provides a list of the top five most downloaded forms in prominent practice areas on PLI PLUS.

Send us an email at plus@pli.edu to learn more.

New Edition! Pharmaceutical and Biotech Patent Law (2023)

PLI Press is proud to announce the publication of the new edition of Pharmaceutical and Biotech Patent Law.

This book provides the legal, scientific, and technical information needed to help clients obtain, defend, and challenge patents in these important business areas. It shows readers how to craft problem-free patent applications and includes detailed checklists that help resolve tricky patent issues in the complex pharmaceutical and biotech fields. It is regularly updated to reflect Federal Circuit rulings and other significant court decisions.

Some of the recent developments reflected in this new edition include:

  • Inter Partes Review: Coverage of the PTO guidance for discretionary denials which clarifies when institutions will not be denied under Fintiv (see Section 1:5.3).
  • Patentability of Stereoisomers and New Salts: Discussion of the Federal Circuit’s decision in Mylan Pharmaceuticals Inc. v. Merck Sharp & Dohme Corp. regarding whether Mylan Pharmaceuticals had failed to show that the claims of U.S. Patent No. 7,326,708 were either anticipated or rendered obvious by the asserted prior art (see Sections 7:2.4[A][2] and 7:2.6[C][1]).
  • Cell and Gene Therapy Products: New chapter exploring the patent landscape for cell and gene therapy products and the current disputes related to these products (see Chapter 15).
  • ITC Litigation: New chapter providing recent trends and practice tips on ITC Litigation (see Chapter 16).

Order a print copy today.

PLI PLUS subscribers can access this title through their subscription.