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U.S. Patent Prosecutor's Desk Reference
Joshua P. Graham and Thomas G. Marlow
388 pages
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235x156mm
978-0-19-974062-8
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Paperback
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07 July 2011
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This item will be ordered from OUP USA. Items ordered from OUP USA are despatched and charged as soon as we receive them, which is normally within 2 weeks
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- ssists patent prosecutors in responding to Office Actions issued by the U.S. Patent and Trademark Office rejecting patent application claims
- Provides a comprehensive and updated source of law, organized by sections corresponding to the types of rejections made by the USPTO
- Cites five different authority sources: statutes, the "Manual of Patent Examining Procedure, 8th Edition;" decisions 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
- Discussions of the decisions made by the Board, the Court of Patent Appeals, and the Federal Circuit included in this desk reference generally have four parts: Technology Area, Quotable Language, Rejection Response, and Relevant Facts
Patent prosecution is more than drafting patents-it is also advocating positions. 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 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 is now the body that 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.Readership: Patent attorneys
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Joshua P. Graham, Patent Counsel, Research In Motion, and Thomas G. Marlow, Intellectual Property Counsel, Fairchild Semiconductor Joshua P. Graham is Patent Counsel for Research In Motion, where he is a patent prosecutor and portfolio manager for the Advanced Technology group. Previously, he worked for Merchant and Gould, where his practice focused on patent litigation and appeals as well as proceedings in the U.S. Patent and Trademark Office. Mr. Graham was a senior editor for IDEA: The Intellectual Property Law Review. He was also a judicial intern for the Honorable Steven J. McAuliffe, Chief Judge of the U.S. District Court for the District of New Hampshire.
Thomas G. Marlow is Intellectual Property Counsel for Fairchild Semiconductor, where he manages product line and business unit patent strategy, enforcement, and procurement. Previously, he worked for Schwegman, Lundberg & Woessner, where his patent practice included electronics, semiconductors, integrated circuit design and fabrication, wireless communications, and computer networks. Mr. Marlow also worked with patent portfolio management,@
including general and competitive patent landscape analysis, to assist prosecution and business-based decisions.
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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 Table of Cases Court of Appeals for the Federal Circuit Court of Customs and Patent Appeals Board of Patent Appeals and Interferences Index
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