Lexis Nexis Patent Office Rules and Practice
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Product description
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The Cornerstone of Any Thriving Patent Law Practice.
Detailed Rule-by-Rule Analysis of the Patent and Trademark Office Rules of Practice.
Included is the text of the rules contained in Title 37 of the Code of Federal Regulations, interpretations of their meanings and explanations of their effect on practice with citations to relevant case law.
Covers Every Area of PTO Practice.
This essential reference provides patent registration applicants with guidelines on the practices and procedures relating to the filing and review of patent applications filed in the Patent and Trademark Office.
The Patent and Trademark Office's Rules Book.
This separate desk reference is updated quarterly, and saves extensive research time by centralizing the most recent statutes and regulations affecting patent law practice. This important volume has been expanded to include the Leahy-Smith America Invents Act, passed by Congress and signed into law by President Barack Obama on September 16, 2011.
Practice-Proven Forms for Handling All Transaction With the PTO.
The forms, which are accepted by the PTO, cover nearly every aspect of practice before the PTO and almost every conceivable situation the practitioner might run into, including: transmittal letters for every type of submission to the PTO; forms necessary for filing regular, continuation-in-part, divisional, and international applications; requests for re-issue and re-examination; actions after final rejection and appeals; and responses, amendments, and various petitions to the PTO.
Available in both print and electronic formats, Patent Office Rules and Practice include:
• The text of the sections of various United States Code and Code of Federal Regulations titles that relate to patent law
• The full text of the Patent Cooperation Treaty, accompanying regulations and administrative instructions
• The text of the Manual of Patent Examining Procedure (MPEP)
• The text of selected relevant notices, directives, clarifications and Helpful Hints issued by the PTO
• More than 350 practice-proven blank forms that can be filled out, and filed with the PTO
• The forms include checklists of what must be done to submit an application
The previous edition ISBN is 9780820521176 and is no longer available.
eBooks, CDs, downloadable content, and software purchases are noncancelable, nonrefundable and nonreturnable. Click here for more information about LexisNexis eBooks. The eBook versions of this title may feature links to Lexis+® for further legal research options. A valid subscription to Lexis+® is required to access this content.
Featured Authors
Horwitz, Ethan
Listed as one of the top 50 trial lawyers in the United States in Law360’s "Trial Aces," and included in Euromoney’s Guide to the World’s Leading Experts in Patent Law, and Euromoney’s Guide to the World’s Leading Experts in Trademark Law, Ethan Horwitz has more than 25 years of experience as a first chair trial and appellate lawyer across the full range of intellectual property law. He litigates and advises clients in the full range of intellectual property matters in the United States and internationally. He is the author of four treatises by LexisNexis, including the three-volume Horwitz on Patent Litigation and five-volume Horwitz on World Trademark Law. He was described as a “fantastic trial lawyer” in World Trademark Review.
Mr. Horwitz has long represented clients in significant electronic, chemical, and mechanical patent cases, including a case in which he obtained the first-ever preliminary injunction on a design patent on behalf of Oscar Mayer, defending its Lunchables product against Sara Lee. Mr. Horwitz also has represented Miller and Molson, who were accused of violating Labatt’s patent on the process for making ice beer. Mr. Horwitz represented Spansion, a flash memory fabricator in one of the largest International Trade Commission cases in history, involving a two-week trial on two patents – one on the construction of a flash chip and the other on the programming of a flash chip.
He has litigated and advised clients regarding a variety of technologies including computer software, telephone logging, Voice-over-Internet Protocol, computer vision, video compression, brewing, pharmaceuticals, food chemistry, chemical processes, skin transplants, antioxidants, and simple mechanical products.
Mr. Horwitz has also tried numerous trademark, trade dress, and dilution lawsuits. These include representing Pepperidge Farm in a landmark case that resulted in a preliminary injunction based on Pepperidge Farm’s rights to the shape of its Goldfish cracker. This case was among the first to issue a preliminary injunction based solely on a dilution claim.
In other trademark and trade dress cases, he defended Lotus’s mark “Notes” against an attack by Borland; Kraft’s trade dress for its Singles product against infringement by Borden; and Kraft’s trade dress and trademark for its Philadelphia Cream Cheese product from infringement by Bongrain. He also defended Cosmair (L’Oreal) and Ralph Lauren in an action brought by Calvin Klein to enjoin their new fragrance, Ralph Lauren Romance.
He defended JPMorgan Chase's adoption of its name after its merger against a claim of infringement by the owner of the mark Morgan Chase. Additionally, he defended JPMorgan Chase's use of Freedom Card from a claim of infringement by former executives of the Freedom National Bank of Harlem; the judgment was affirmed by the Third Circuit.
In false advertising cases, Mr. Horwitz represented Kraft’s Jell-O gelatin and stopped Del Monte from calling its product “Gelatin Snacks.” The snacks were actually made of carrageenan, which is commonly described as gelatin though it fails to meet the technical definition. In addition to many court actions involving false advertising, he has brought and defended cases before the National Advertising Division of the Better Business Bureau and its Canadian and German equivalents.
In copyright cases, Mr. Horwitz represented Joe Simon, a co-author of the comic character Captain America, against Marvel Comics and won a landmark Second Circuit case holding that Mr. Simon could sue to recover his copyright from Marvel. In another case, Mr. Horwitz’s client, Colgate, was accused of copying Procter & Gamble’s advertising for Crest toothpaste. The respective ads were used by both companies in many countries around the world. Mr. Horwitz argued the case before the National Copyright Administration in Beijing, and then tried to a verdict for Colgate, which was affirmed by the Second Circuit.
In another copyright case, J. Walter Thompson and Northwest Mutual Life were accused of copying Chase Manhattan’s advertising. Mr. Horwitz resisted a preliminary injunction and created new law that a preliminary injunction could be refused based on the movant’s delay alone.
In addition, he has extensive experience handling the unique issues related to computer programs protection, including litigating the related copyright and patent issues, and helping to develop compatible programs that do not infringe the basic program. He has advised clients on establishing worldwide protection for their intellectual property, and has set up and implemented anti-counterfeiting programs for clients, including Timberland and David Yurman. Mr. Horwitz has also advised clients regarding the launch of products and/or advertisements to ensure that they do not violate the intellectual property rights of others and to ensure that all claims are substantiated.
Mr. Horwitz has extensive experience in appellate work as well. He has argued appeals in such courts as the Federal Circuit, the Second Circuit, and the New York Court of Appeals, and in administrative settings, including the Patent Trial and Appeal Board. Some of his appeals involved landmark decisions relating to reversionary rights under the Copyright Act, the status of well-known marks, and issues of attorney-client privilege in patent cases.
Table of contents
VOLUME 1
Rules 1–29: The Patent Office
Rules 31–36: Attorneys: Appointment and Prosecution
Rules 41–69: Filing Patent Application
Rules 71–74: Disclosure I (Specification)
Rule 75: Disclosure II (Patent Claims)
VOLUME 2
Rules 76–80: Disclosure III
Rules 81–98: Disclosure IV
Rule 99: [Reserved]
Rules 101–110: Examination and Rejection
VOLUME 3
Rules 111–114: Response and Further Consideration
Rules 115–129: Amendments
Rules 130–133: Overcoming Rejections: Affidavits and Interviews
Rules 134–140: Time for Response—Abandonment
Rules 141–146: Division and Election of Species
Rules 151–155: Design Applications
Rules 161–167: Plant Applications
Rules 171–179: Reissue Applications
Rules 181–188: Petition and Rules
Rule 188
Appendix XVIIA: Ombudsman Pilot Program
Rules 191–198: Ex Parte Appeal: Board
Rules 211–221: Publication of Applications
Rules 248–251: Miscellaneous Provisions
Rules 290–291: Preissuance Submissions and Protests by Third Parties
Rules 311–318: Allowance and Issuance of Patent
Rules 321–325: Disclaimer and Correction of Patent
Rule 335: Filing Notice of Arbitration Award
Rules 351–352: Amendment of Rules
Rules 360–378: Maintenance Fees
Rules 401–499: International Processing Provisions
VOLUME 4
Rule 499
Chapter XXXVIA: Coordination Between the U.S. Patent and Trademark Office and Foreign Patent Offices
Rules 501–570: Reexamination
Rules 601–626: Supplemental Examination of Patents
Rules 701–791: Extension of Patent Term
Rule 750:
Appendix XXXIXA: FDA Regulations on Extension of Patent Term
Rules 801–809: Biotechnology Disclosure; Deposit of Biological Material
Rules 821–825: Application Disclosures Containing Nucleotide and/or Amino Acid Sequences
Rules 3.1–3.85: Assignment, Recording and Rights of Assignee
Rules 902–997: Reserved
Rules 1001–1071: International Design Application
Appendix XLVA: Guide to the International Registration of Industrial Designs Under the Hague Agreement
VOLUME 5
Rules 11.1–11.901: Representation of Others Before the United States Patent and Trademark Office
Rules 41.1–41.208: Practice Before the Patent Trial and Appeal Board
Rule 41.208
Appendix XLVIIA: United States Patent and Trademark Office Board of Appeals and Inferences Trial Section CONTESTED CASE PRACTICE GUIDE
Rules 42.1–42.80: Trial Practice Before the Patent Trial and Appeal Board
Rules 42.100–42.123: Inter Partes Review
Appendix XLIXA: Patent Trial and Appeal Board Standard Operating Procedures
Rules 42.200–42.224: Post Grant Review
Rules 42.300–42.304: Transitional Program for Covered Business Method Patents
Rules 42.400–42.412: Derivation Proceedings
Rule 90: Judicial Review of Patent Trial And Appeal Board Decisions
Rule 90.3
Appendix LIIA: Federal Circuit of Practice
Commentary Index
VOLUME 6
Notices Index
NOTICES from 2005 through 2010
VOLUME 7
NOTICES from 2011 through 2012
VOLUME 8
NOTICES from 2013 through 2020
VOLUME PATENT OFFICE BOOK
Patent-Related Sections of the United States Code
Index to the Patent-Related Sections of the United States Code
Leahy-Smith America Invents Act
37 Code of Federal Regulations Patents, Trademarks, and Copyrights
Index to 37 Code of Federal Regulations
Patent Cooperation Treaty
Regulations under the Patent Cooperation Treaty (as in force from July 1, 2020)
Administrative Instructions under the Patent Cooperation Treaty (as in force from July 1, 2020)
Paris Convention
The Hague Agreement Concerning the International Registration of Industrial Designs—Geneva Act of July 2, 1999
Common Regulations Under the 1999 Act and the 1960 Act of the Hague Agreement
Administrative Instructions for the Application of the Hague Agreement
VOLUME ★
Forms Index
Chapter 1. Declarations by Inventor, Applicant, Assignee
Chapter 2. Powers Of Attorney, Correspondence Address, and Authorizations by Applicant
Chapter 3. Designs
Chapter 4. Transmittals of Patent Applications, Application Data Sheet and Other Submissions Upon Filing
Chapter 5. Completion of Filing Requirements
Chapter 6. Duty of Candor and Information Disclosure Statement
VOLUME ★★
Chapter 7. Small Entities
Chapter 8. Certificate Of Mailing, Priority Mail Express and Facsimile Transmissions
Chapter 9. Prioritized Examination, Petitions to Make Special, PPH
VOLUME ★★★
Chapter 10. Matters During Prosecution
Chapter 11. Extensions of Time and Petitions for Revival of Patent and Patent Term Adjustment
Chapter 12. Appeal to the Patent Trial and Appeal Board
Chapter 13. PCT International Application and U.S. National Processing
Chapter 14. Matters After Patent Grant
Chapter 15. Appeals to the CAFC
VOLUME ★★★★
Chapter 16. Assignments
Chapter 17. Reissue
Chapter 18. Reexamination
Chapter 19. Miscellaneous Forms
Chapter 20. Fees
Chapter 21. Maintenance Fees
Chapter 22. Licenses for Foreign Filing
Chapter 23. Provisional Applications
Chapter 24. European Patent Office
Chapter 25. Publication
Chapter 26. Electronic Business Center
Chapter 27. Interferences
Chapter 28. AIA Forms
Chapter 29. Inter Partes and Post-Grant Review
Chapter 30. International Design Applications and U.S. National Processing
