New 2009 Supplement to Drafting Patents for Litigation and Licensing Offers a Guide Through the Minefield of Court Decisions That Erode the Scope and Validity of Patents

ARLINGTON, Va., Jan. 15 /PRNewswire-USNewswire/ -- BNA Books, a division of specialized news and information publisher BNA, announced today the publication of the 2009 Supplement to Drafting Patents for Litigation and Licensing. The supplement and its main volume are published by BNA Books, and written by members of the American Bar Association Section of Intellectual Property Law.

(Logo: http://www.newscom.com/cgi-bin/prnh/20090529/DC24463LOGO)

Drafting Patents for Litigation and Licensing is the first book to help patent practitioners draft the broadest and strongest possible patent that can sustain a validity challenge by synthesizing and applying lessons from the case law, and includes in-depth discussions on:

• Pitfalls in claim drafting
• Dangers of means-plus-function clauses in claims
• Targeting direct infringers;
• Recent trends regarding the scope of enablement
• How to "Festo-Proof" a patent application
• Pitfalls with provisional patent applications;
• Strategies for continued prosecution of patents.

Drafting Patents for Litigation and Licensing focuses on real-life examples taken from court decisions, especially those from the U.S. Court of Appeals for the Federal Circuit, in which patents are interpreted, enforced, or licensed. Lessons gleaned from these decisions are broken out by principle and area of technology, providing detailed advice for drafting strong patents, avoiding problems, and maximizing leverage.

The 2009 Supplement has been extensively updated, and covers the most current topics in the patent world, including "Functional" claiming -- the dichotomy between how courts treat this issue and how the USPTO treats it; the use of coined terminology in patent claims and how it can be a trap for the unwary; obviousness issues in mechanical patent applications after KSR; Inter partes reexamination strategy after Cooper Technologies v. Dudas; patents relating to stem cells in the European Patent Office; and claim interpretation of patents obtained through the EPO. The new supplement also includes major new cases   such as:

• In re Bilski, setting forth a new (and more restrictive) test for patentability of method claims, with broad ramifications for the computer software, financial industries, and related fields of technology
• Muniauction, Inc. v. Thomson Corp., providing a warning to patent attorneys regarding the drafting of process claims that require actions by different actors
• Tafas v. Dudas—partially striking down the PTO's new rules limiting continuation applications
• Egyptian Goddess v. Swisa -- elimination of the "point of novelty" test for design patent infringement

The 2009 Supplement also provides new information on claim strategies in view of the PTO's partially invalidated rules limiting claims; drafting claims to avoid the effects of Quanta Computer (patent exhaustion); whose decision controls concurrent litigation/USPTO reexamination of claims, and more.

The editor-in-chief of Drafting Patents for Litigation and Licensing, and its 2009 Supplement is Bradley C. Wright, a senior partner at Banner & Witcoff, Ltd. He concentrates his practice in patent prosecution, litigation and counseling, especially in the electrical and computer-related areas including Internet and e-commerce. Other chapter authors were selected for their expertise in specific types of patents, claim drafting, and litigation.

BNA is a leading private publisher of news and information products for professionals in law and business. In addition to the 2009 Supplement to Drafting Patents for Litigation and Licensing, BNA's Book Division publishes Biotechnology and the Federal Circuit; Drafting Patent License Agreements; Electronic and Software Patents; Anatomy of a Patent Case; Harmon on Patents: Black-Letter Law and Commentary; Intellectual Property Taxation: Transaction and Litigation Issues; International Patent Litigation: A Country-by-Country Analysis; Patent Law and Practice; Patent Prosecution: Law, Practice, and Procedure; Patent, Trademark, and Copyright Laws; Patent, Trademark, and Copyright Regulations; Patents and the Federal Circuit; Pharmaceutical Patent Law; Trademark Dilution: Federal, State, and International Law; Trademark Infringement Remedies; and other titles in legal specialties. For a free BNA Books catalog, call 1-800-960-1220 or send an e-mail request to [email protected]. The BNA Books website, including an online catalog, can be found at bnabooks.com.

The 2009 Supplement to Drafting Patents for Litigation and Licensing may be purchased alone (Order # 1842-PRY9/$195.00 plus tax, shipping, and handling) or with the main volume (2008/Order #9842-PRY9/$375.00, plus tax, shipping, and handling) from BNA Books, PO Box 7814, Edison, NJ 08818-7814. Telephone orders: 1-800-960-1220. Fax orders: 1-732-346-1624. A 10% discount is available on print copies of books when ordering from the website at bnabooks.com. Please note that discounts cannot be combined.

SOURCE BNA Books