Electronic and Software Patents: Law and Practice, Third Edition

Electronic and Software Patents: Law and Practice, Third Edition is a strategy guide that helps practitioners deal with today s lightning-paced technological developments, changes in USPTO policy, and pivotal court rulings. In this step-by-step guide, 29 experts handpicked for their experience with this challenging specialty provide perspectives and tactics, including: Guidance on tough decisions such as whether to seek patent protection at all; how to search for and evaluate prior art; how to use trade secret and copyright law in conjunction with patent strategy; and how to draft claims for broad yet distinct interpretation Succinct, useful lessons on preparing computer-related patent applications under Alappat, its progeny, and the USPTO s examination guidelines Compelling insights on drafting with the appropriate scope and the unique, software-related aspects of the best-mode, enablement, and written-description requirements of Section 112 Candid practice tips and traps for each step of the patent prosecution process International survey of the statutes, regulations, and case law of more than 40 nations plus basic global principles of patentability Eight representative sample patents, a timesaving practice checklist, a case table, and an exhaustive topic index The new Electronic and Software Patents: Law and Practice, Third Edition, co-published with the American Intellectual Property Law Association, also includes: Guidance for writing specifications in view of Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co. Analysis of the Federal Circuit s application of the Supreme Court s decision in Bilski to Research Corporation Technologies, Inc. v. Microsoft Corporation. Insights for drafting claims in view of Cybersource Corp. v. Retail Decisions, Inc. Tips for writing preambles that do not limit when the claim is interpreted Pointers for creating the best possible patent application Ways to expedite the patent examination process also are provided, as are suggestions for maximizing success with the USPTO using (1) pre-first action interview, (2) first action interview program, and (3) pre-approval brief review request. The treatise also gives strategies for accelerating the issuance of a patent via the Patent Prosecution Highway and contains a comprehensive list of databases for searching patents, including U.S. and foreign government databases, commercial patent databases, non-patent literature databases, and internet search engines.