U.S. Patent Opinions & Evaluations

Publisher: Matthew Bender
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Print Book :Softbound
2nd Edition
ISBN: 9780769868691
Published: September 15, 2015
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$333.00
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2nd Edition
ISBN: 9780769870502
Published: September 15, 2015
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eBook :mobi
2nd Edition
ISBN: 9780769870502
Published: September 15, 2015
In Stock
Price
$333.00
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U.S. Patent Opinions & Evaluations authored by David L. Fox: Patent opinions and evaluations are used in virtually all endeavors involving United States patents, including litigation, prosecution, licensing, product design, product launch, evaluation for acquisition or disposition of intellectual property, bankruptcy, and U.S. securities issues. In U.S. Patent Opinions and Evaluations, David Fox provides expert, up-to-date, practical advice and guidance on the four principle issues of patent opinions and evaluations: claim construction and claim scope, infringement, validity, and enforceability. This second edition Features a first-of-its-kind discussion of opinions of non-willful infringement based on the Seagate two-prong test for objective willfulness and an evaluation of the test, including analyses of Federal Circuit decisions applying the test. The case law, including Bilski and developments in indirect and joint infringement, has been completely updated, along with effects on willfulness, including updates related to the America Invents Act of 2011. Finally, the book has been restructured for easier use by attorneys preparing opinions and for those relying on these opinions.

David L. Fox masterfully addresses the needs of the practicing attorney preparing a patent opinion, combining discussions and the framework of the current law with specific practice tips. He also provides clear, straight-forward guidance for non-patent professionals on the principles of U.S. patent law and the fundamentals of U.S. patent opinions and evaluations, allowing them to better understand and rely on them. U.S. Patent Opinions and Evaluations covers everything from general issues--including overviews of opinions, rules for preparing competent opinions, and waiver to nuts-and-bolts issues such as claim construction and claim scope, infringement, validity, and enforceability. The "Practice Tips" and the appendices provide further practical guidance by setting forth exemplary outlines of opinions and evaluations. A subject index enables quick and easy use of the book as a reference for specific topics.

Features

•   Written by a well-respected senior counsel and PhD with years of extensive experience in intellectual property law as well as biotechnology and chemistry
•   Uses a unique, strategic approach to provide guidance and real-life examples for patent litigation
•   Comprehensive and forward-looking approach to patent evaluations and opinions with helpful practice tips and subject-matter organization for ease of reference

Reviews

"This book is a valuable resource for experienced patent lawyers and beginners alike interested in all aspects of patent opinions." -- Paul E. Krieger, Partner, Morgan, Lewis & Bockius LLP Adjunct Professor, University of Houston College of Law

"David Fox has authored a most useful and thorough resource for those seeking to know more about US patent opinions and evaluations. Non-attorney business persons and seasoned patent practitioners alike will find this book worthwhile. With stand-alone chapters having helpful practice points and sample opinions, it both edifies and clarifies the law and practice of patent evaluations." -- Patrick Turley, J.D., Ph.D., Associate General Counsel, Baylor College of Medicine

"David Fox's valuable and comprehensive book will enable non-U.S. patent professionals -- such as European Patent Attorneys -- to better understand the critical subject of U.S. patent opinions and evaluations." -- John Hedenström, Senior Patent Counsel, European Patent Attorney, McNeil AB

"David Fox's book is an extremely valuable resource for any investment professional who deals with intellectual property, and will help to avoid hours or days of wasted effort in the investment screening process. It should be part of any investment professional's reference library." -- Shannon W. McAdams, CFA Director, Galway Group

Authors / Contributors

Table of Contents


CHAPTER 1 Evaluations and Opinions of U.S. Patents

CHAPTER 2 Evaluations and Opinions of U.S. Patents for Infringement and Noninfringement, Validity and Invalidity, and Enforceability and Unenforceability, and Clearance (Freedom to Operate); and A Businessperson's Guide to Understanding and Relying on Evaluations and Opinions of U.S. Patents

CHAPTER 3 Opinions for Avoiding Willful Infringement, Including Opinions of Nonwillfulness

CHAPTER 4 Competency of, and Reliance on, Opinions for Avoiding Willful Infringement

CHAPTER 5 Attorney-Client Privilege and Work Product Immunity Issues Related to Opinions for Avoiding Willful Infringement

CHAPTER 6 Role of Evaluations and Opinions of U.S. Patents in Due Diligence

CHAPTER 7 Use of Evaluations and Opinions of U.S. Patents in Strategic Patenting, Including Patent Landscapes, and Ownership Issues

CHAPTER 8 Evaluations and Opinions of Patentability for Potentially New Inventions

CHAPTER 9 Evaluations and Opinions of Patents for Post-Grant U.S. Patent Office Proceedings

CHAPTER 10 Evaluations and Opinions of Patents in Bankruptcy

CHAPTER 11 Evaluations and Opinions of U.S. Patents for SEC Issues and Patent Audits

CHAPTER 12 Other Uses of Evaluations and Opinions of U.S. Patents: Prefiling Rule 11 and Section 285 Investigations, Declaratory Judgment Actions, Preliminary Injunctions, FDA-Related ANDA Matters, Litigation in "Rocket Docket" Jurisdictions, and ITC Investigations

CHAPTER 13 Claim Construction

CHAPTER 14 Literal Infringement

CHAPTER 15 Infringement under the Doctrine of Equivalents

CHAPTER 16 Indirect Infringement, Divided Infringement, and Section 271(e)(1) "Safe Harbor"

CHAPTER 17 General Principles of Anticipation and Anticipation by Printed Publication

CHAPTER 18 Other Forms of Anticipation

CHAPTER 19 Obviousness

CHAPTER 20 Other Forms of Invalidity

CHAPTER 21 Unenforceability

Appendix A Sample Outline of Noninfringement and Invalidity Opinion

Appendix B Sample Outline of Noninfringement Opinion

Appendix C Sample Outline of Invalidity Opinion

Appendix D: Sample Outline of Noninfringement and Nonwillfulness Opinion