LibGuides: IP Law: Patents: Practice materials in print

Practitioner's Guide

Patent law : a practitioner's guide
Available , 3rd Floor Stacks ; KF3114 .H55 1993
Hildreth, Ronald B., 1933-
©1993; 2nd ed.
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Patent Law features numerous timesaving sample forms; flowcharts, diagrams and tables that quickly enhance your understanding of key patent law issues; and hypothetical questions (with answers) that help prepare you for the real-world challenges of patent prosecution.--Publisher's description

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Nolo's patents for beginners
Pressman, David, 1937- author.; Stim, Richard, author.
2021; 10th edition.
Available , 1st Floor Access to Justice Collection ; KF3114.85 .P737 2021
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Provides an introduction to the patenting process, including information on invention documentation, patent searching, patent ownership, and patent infringement.

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Anatomy of a patent case
Available , 3rd Floor Stacks ; KF3120 .A84 2009
American College of Trial Lawyers. Complex Litigation Committee.; Federal Judicial Center.
2009
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Introduction and overview of a patent lawsuit -- The pizza box case: anatomy of a case for patent novices -- The complaint -- Motions to dismiss, to transfer, to strike -- Answer and counterclaims -- Preliminary injunction motions -- The case-management conference -- Discovery issues unique to patent cases -- Claim construction: the Markman hearing -- Summary judgment motions -- Pretrial issues and motions in limine -- Trial -- Posttrial proceedings -- The appeal.

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Patent law and practice
Available , 3rd Floor Stacks ; KF3120 .S38 2011
Schwartz, Herbert F.; Goldman, Robert J.
©2011; 7th ed.
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Patent Law and Practice was first published by the Federal Judicial Center in 1988 as a one-volume introduction to patent law for federal judges. Since that time, the judiciary has come to rely on this reference for up-to-date information on patent law as it has evolved in response to the courts, Congress, and changes in practice at the Patent and Trademark Office (PTO). Patent Law and Practice has been cited by courts more than 100 times since its initial publication, most notably in the Supreme Court decision, Markman v. Westview Instruments. Now, with the all-new Seventh Edition, the authors provide the latest analysis of the most recent case law and new legislation, including the Leahy-Smith America Invents Act, enacted into law on September 16, 2011. This law encompasses sweeping changes to the U.S. patent code, including a move to the first-inventor-to-file priority system and new options for testing the validity of an issued patent. The handbook also has been updated with discussion of the most important patent law decisions from the past three years, including: Bilski v. Kappos (2010, S. Ct.), in which the Supreme Court addressed the scope of patentable subject matter, paving the way for resolution of validity challenges in the fields of business method patents, computer software, and biotechnology inventions i4i v. Microsoft (2011, S. Ct.), in which the Supreme Court established the burden of proof for allegations of patent invalidity and explained how to address in litigation the problem of prior art that was not considered by the PTO during prosecution of the patent in suit Therasense v. Becton Dickinson (2011, Fed. Cir.), in which the Federal Circuit redefined the defense that a patent may be unenforceable because of inequitable conduct, overturning 30 years of decisional law Uniloc v. Microsoft (2011, Fed. Cir.) and a series of related decisions beginning with Lucent v. Gateway (2009, Fed. Cir.), in which the Federal Circuit began to establish new standards for asserting and proving reasonable royalty damages The Seventh Edition covers these decisions, as well as the Federal Circuit s continued evolution of the law relating to claim construction, invalidity for anticipation and obviousness, the statutory disclosure and claiming requirements, indirect infringement, and the availability of injunctive relief for patent infringement. Practitioners will use the latest edition of Patent Law and Practice to: Cite cases and sources relied upon by the bench Direct the judge to a specific page in the guide for a key case or explanation Understand, and specifically address, procedural issues facing the court To simplify research in the large volume of Federal Circuit decisions and cut down on research time, the treatise s footnotes have been revised and shortened to provide only the relevant leading cases and recent examples of how the Federal Circuit has applied the law. --Publisher's description

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Filing patents online : a professional guide
Available , 3rd Floor Stacks ; KF3125.C5 N53 2003
Niazi, Sarfaraz, 1949-
©2003
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The average cost of an uncomplicated patent application filing is about 10,000. This high cost can leave thousands of inventors out in the cold. Filing Patents Online: A Professional Guide is a complete manual that walks inventors through each step of filing and prosecuting the patent online at a fraction of the cost. The online filing system recommended in the book allows continuous monitoring of the review status and for a much faster approval than the traditional route. Drawing from the many years of the author's experience as both an inventor and a patent agent, this guide teaches the met.

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Invention analysis and claiming : a patent lawyer's guide Slusky, Ronald D.
Available , 3rd Floor Stacks ; KF3131 .S58 2007
Slusky, Ronald D.
2007; 1st ed.
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This book is a comprehensive approach to analyzing inventions and capturing them in a sophisticated set of patent claims. It provides the reader with practical pointers and guidance and uses everyday inventions as references, such as the ball point pen and paperclip.

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A guide to biotechnology law and business
Available , 3rd Floor Stacks ; KF3133.B56 B64 2007
Bohrer, Robert A.
©2007
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"This book is a guide to the "big picture" of biotechnology law and business, presenting and analyzing the issues that arise throughout the life cycle of a biotechnology product. The book focuses primarily on the pharmaceutical field, from university research, through the development process, and into the marketplace. The aim of the book is to provide guidance to the biotechnology legal and business communities by providing a practical and integrated discussion of the many different topics that arise in developing biotechnology products. It is intended to be used by LP lawyers, FDA lawyers, business lawyers, and biotech executives who want a concise introduction to the most fundamental issues in biotechnology law and business."--BOOK JACKET.

West In A Nutshell

Patent law in a nutshell
Available , 1st Floor Permanent Reserves ; KF3114.85 .A34 20
Rader, Randall R., author.; Christoff, Benjamin J., author.
2018; Third edition.
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"This Nutshell provides a...description of the fundamentals of U.S. patent law. Ranging from the acquisition of patent rights to their enforcement, it contains an overview of relevant statutes, rules, and cases that collectively define this area of intellectual property law. Topics include claim construction, obviousness, anticipation, written description and enablement, infringement, remedies, and other notable doctrines. Patent law has evolved quickly in the past few years. This Nutshell captures those changes and relates them well to the overall fabric of intellectual property law."-- Provided by publisher.

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Patent law in a nutshell
Available , 3rd Floor Stacks ; KF3114.85.A34 2013
Adelman, Martin J., 1937-; Rader, Randall R.; Klancnik, Gordon P.
2013; Second edition.

Handbooks

Patent Law and Practice
Goldman, Robert J. author.; Nyarady, Catherine, author.
2019; Ninth edition.
Available , 2nd Floor; KF3120 .S38 2019
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The source that judges use to review patent issues Patent Law and Practice was first published by the Federal Judicial Center in 1988 as a one-volume introduction to patent law for federal judges. Since that time, judges and their law clerks have come to rely on this reference for up-to-date information on patent law as it has evolved in response to the courts, Congress, and changes in practice at the Patent and Trademark Office (PTO). Patent Law and Practice has been cited by courts more than 100 times since its initial publication, most notably in the Supreme Court decision, Markman v. Westview Instruments. The all-newEighth Edition summarizes and analyzes the most recent developments in the law, including the sweeping changes resulting from the Supreme Court and Federal Circuit decisions that have: redefined the concepts of patent-eligible subject matter, paving the way for new validity challenges to patents covering software, business methods, as well as those for diagnostic methods and other biotechnology inventions (the Mayo/Myriad/Alice trilogy and the Federal Circuit and District Court decisions that have implemented the new Supreme Court analysis); redefined the standards for resolving challenges to claim indefiniteness and appeals of District Court claim construction decisions (Nautilus v. Biosig Instruments and Teva v. Sandoz); redefined the concept of the exceptional case for which a successful litigant may recover its attorney fees (the Octane Fitness and Highmark decisions); and further changed the law of remedies, including the required proofs to obtain injunctive relief and to claim damages, both generally and in the context of standards essential patents (the cellphone war cases, including Apple v. Samsung, Apple v. Motorola, Microsoft v. Motorola and Ericsson v. D-Link Systems). The Eighth Edition also analyzes the interplay between District Court litigation, which is the focus of this book, and the new procedures for post-grant challenges implemented by the PTO since enactment of the Leahy-Smith America Invents Act in 2011. The Eighth Edition covers these decisions, as well as the Federal Circuit s continued evolution of the law relating to claim construction, invalidity for anticipation and obviousness, indirect and divided infringement, and equitable defenses, including patent misuse and laches. Practitioners will use the latest edition of Schwartz sPatent Law and Practice to: Cite the leading cases and the most thoughtful analyses applying those leading authorities; Direct the judge to a specific page in the guide for a key case or explanation; and Understand, and specifically address, procedural issues facing the court. Herbert F. Schwartz, who originated this book, passed away in 2014. To honor his contributions to earlier editions and to the field of patent law generally, the book has been renamed Schwartz s Patent Law and Practice. --from Publisher. Description for the eight edition.

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Patent Law Handbook (1978-2022)
Available , 3rd Floor Stacks ; KF3114.3 .R67
Rose, Gerald, 1930-
1978-
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Helps attorneys discern what the courts may find, while providing immediate access to current law. Also alerts attorneys to new developments in the law and how they may impact an individual practice. Easy access to information on validity; inequitable conduct; defenses and counterclaims; infringement; willful infringement; remedies; appeal; pretrial and trial issues; Patent Office proceedings; licensing; patent proceedings in other forms, including ITC proceedings and claims court. Also analyzes Federal Circuit’s approach to statutory subject matter as it relates to computer software, its decision clarifying the role of judges and juries in interpreting claims, and its holdings in other opinions. --Publisher's website

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Compensatory damages issues in patent infringement cases : a pocket guide for Federal District Court judges
Available , 3rd Floor Stacks ; KF3155 .R66 2011
Federal Judicial Center.; Rooklidge, William C., 1957-
2011
Online access also available through:
The Federal Judicial Center
U.S. Govt. Print. Off.
HeinOnline

The 2017 second edition is not available in print currently.
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Several years ago, then-Chief Judge Paul R. Michel of the U.S. Court of Appeals for the Federal Circuit brought together a diverse group of lawyers, judges, academics, and experts to develop a guide for trial courts to consult when faced with issues of compensatory damages in patent infringement cases. The goal was to bring to bear the participants’ collective experience on how best to address and resolve patent damages issues, all within the overarching framework of achieving the “just, speedy, and inexpensive determination of every action and proceeding.” The first edition of this pocket guide, published in 2011, was the result.As that initial publication recognized, however, patent infringement damages is a continuously evolving area of law. In the intervening years, the courts not only have continued to refine the legal principles that govern the determination of patent infringement damages, but also have implemented a variety of case-management techniques that focus on patent damages. Judge Jeremy Fogel, director of the Federal Judicial Center, therefore requested a revised patent damages guide to reflect the current state of the law and the courts’ evolving case-management efforts. This second edition is the result.--Taken from the 2017 second edition description.

Guidebooks

Patent it yourself : your step-by-step guide to filing at the U.S. Patent Office
Available , 1st Floor Access to Justice Collection ; KF3114.85 .P74 2023
Pressman, David, 1937- author.; Blau, David E., author.
2023; 21st edition.

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Patent Mediation Guide
Available , 2nd Floor ; KF3155 .V53 2019
Vidal, Kathi, author.; Kalay, Leeron G., author.; Menell, Peter Seth, author.; Powers, Matthew (Lawyer) author.; Venkat, Sarita, author.; Federal Judicial Center, issuing body.
2019
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"This stage-by-stage and issue-by-issue guide supplements the Patent Case Management Judicial Guide (PCMJG), a comprehensive treatise developed for the federal judiciary"--Page v.
Supplement to (work): Menell, Peter Seth. Patent case management judicial guide. Third edition. Washington, D.C. : Federal Judicial Center, 2016 (OCoLC)957007844 --Publisher's website

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Patent law essentials : a concise guide
Durham, Alan L., 1963-
2013; Fourth edition.
Available, 2nd Floor; KF3114.85 .D87 2013
"Business has always been driven by ingenuity and innovation. Now more than ever, with an economy built on intangible business intelligence and digital yield, developing--and protecting--intellectual property is vital for individuals and organizations alike. This book presents a brief but thorough survey of United States patent law. Drawing from both practical and academic experience, author Alan Durham explains the fundamental principles of the subject and reviews recent changes in legislation affecting its practice. Patent Law Essentials: A Concise Guide, Fourth Edition explains the latest revisions to the protections and limitations of patent law and includes recent Supreme Court decisions concerning the patentability of software, business methods, and advancements in biotech. An engaging writing style makes the technical content accessible to novice and expert practitioners alike." -- Publisher's description

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Patent case management judicial guide
Menell, Peter Seth.; University of California, Berkeley. School of Law.; Federal Judicial Center.
2009
Available, 2nd Floor ; KF3120 .M46 2009
"This ... judicial guide to the management of patent cases is the latest product of an eighteen-year collaboration between the Federal Judicial Center and the Berkeley Center for Law and Technology at the University of California--Berkeley School of Law."--Foreward to third edition.

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Infringement of the United States patent right : a guide for executives and attorneys
Available , 3rd Floor Stacks ; KF3114 .H64 1995
Holzmann, Richard T.
c1995
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Dr. Holzmann introduces the manager and technologist as well as the student and the foreign patent practitioner to the United States Law of Patent Infringement. Dr. Holzmann directly addresses what to do when a patent is being infringed. The author explains and interprets the intricacies of the patent law and provides a strong basis of understanding future changes in patent law. This valuable volume should appeal to academics and students of law, attorneys specializing in corporate law, patent attorneys, CEOs in technical firms, and CEOs of foreign corporations. --Publisher's description

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The patent process : a guide to intellectual property for the information age
Hovey, Craig, 1958-
©2002
Available , 3rd Floor Stacks ; KF3114 .H68 2002
Includes the application process, legal issues, licensing your idea, and copyrights and trademarks.

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Patent pending in 24 hours
Available , 1st Floor Access to Justice Collection ; KF3120.Z9 S75 2019
Stim, Richard, author.; Pressman, David, 1937- author.
2019; 8th edition.
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"The provisional patent application (PPA) is a quick, inexpensive and legal way to claim your invention--and buy yourself time to determine whether it's worthwhile to pursue a regular patent. Patent Pending in 24 Hours shows you how to: conduct a patent search online, complete all the necessary forms, evaluate potential hurdles to patentability, Prepare informal drawings, file your application, and, file a new PPA to reflect modifications. The 8th edition covers the latest implications of the "America Invents Act," as well as recent revisions to patent rules and regulations. Includes key PPA-related forms: nondisclosure agreement, patent assignment, prototype-maker agreement, and joint-ownership agreement."--Page four of cover.

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What is a patent? : a guide for the IP lawyer.
Available , 3rd Floor Stacks ; KF3114.3 .W453 2001
American Bar Association. Section of Intellectual Property Law.
©2001?

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Patent law essentials : a concise guide
Available , 3rd Floor Stacks ; KF3114.85 .D87 2009
Durham, Alan L., 1963-
2009; 3rd ed.
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Business has always been driven by ingenuity and innovation. Now, more than ever, with an economy built on knowledge, work, and intangible value, developing―and protecting―intellectual property is vital for individuals and organizations alike. This book presents a brief but thorough survey of U.S. patent law, provided in the clearest possible terms for nonspecialists―including scientists, engineers, business managers, and entrepreneurs―as well as students and practitioners of patent and intellectual property law. Drawing from both practical and academic experience, Alan Durham explains the basis of patent law and how it differs from copyright and trademark law, what is and isn't patentable, how to apply for patents, disclosure requirements, responding to infringement, and pursuing litigation. Durham explains complex legal issues through in-depth examples, case decisions, and wise insights only a practiced patent attorney can provide.

The revised and updated Third Edition discusses recent developments in the law and draws from the most current case authority. For example, it covers the apparent court backtracking on the patentability of business practices and what that means for both businesses and inventors. It also covers the Supreme Court's review of the obviousness standard, the changing standards for willful infringement, the reexamination by the Federal Circuit Court of Appeals of the protocols for interpreting patent claims, and the potential for patent law reforms in the next few years. Used as an introduction to the topic or a handy desk reference, this book will be an indispensable guide to the dynamics and mechanics of patent law. Durham illustrates complex legal issues through dozens of in-depth examples, many borrowed from actual cases. Of particular interest are cases involving patent disputes over computer software and biological materials. From building a better mousetrap to building a better mouse, Patent Law Essentials defines the coverage and limitations of patent law and its protections, and shows how they are applied in the courts and in practical application. --Publisher's description

Legal research Kickstarters

Patent law index
Available , 3rd Floor Stacks ; KF3103.5 .P53 1997
Pickett, Christopher M.
c1997; 1997 ed.

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Patent law precedent: key terms and concepts
Available, 3rd Floor Stacks ; KF3109 .A35 1991
Aisenberg, Irwin M.
c1991

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Patent law precedent : key terms and concepts
Available , 3rd Floor Stacks ; KF3109 .A35 1992
Aisenberg, Irwin M.
1992; 2nd ed.

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Modern patent law precedent : dictionary of key terms and concepts
Available , 3rd Floor Stacks ; KF3109 .A35 1997
Aisenberg, Irwin M.; Aisenbert, Irwin M.
©1997; 3rd ed.

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Modern Patent Law Precedent: dictionary of key terms and concepts
Available , 2nd Floor Reference Collection ; KF3109 .A35 2003
Aisenberg, Irwin M.
©2003; 5th ed.
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Rapid technology advances in all aspects of our society are leading to more patent filings and more patent litigation. In response, important new precedents are flowing from the courts at the same time many traditional terms and issues are being further refined
For and patent practitioner or researcher The New Modern Patent Law Precedent, Fifth Edition is the first place to turn for a quick, up-to-date, on point reference to developments in this burgeoning body of law.

Are you aware of how the courts are assessing the term "Method of Doing Business" to expand available patent protection to new applications in financial services and other areas? Look up the phrase in Modern Patent Law Precedent and you'll see recent and prior case comments in chronological order. All the terms are encountered in prosecution or litigation relating to obtaining, enforcing or defending against patents. The text is that of written opinions or paraphrases thereof. --Publisher description

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National intellectual property directory.
Available , 3rd Floor Stacks ; KF3165.A3 N38
American Lawyer Media (Firm)
©2004

Research Guides

The eligibility of DNA sequence discoveries for federal patent protection : a legal research guide
Available , 2nd Floor Reference Collection ; KF3133.B56 L86 2004
Lundgren, Andrew Auchincloss.
2004
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This pathfinder addresses the convergence between DNA sequencing discoveries and their patentability. The issue is very pertinent given its impact on biochemistry, medicine, and (ultimately) the future of human physiological development. Both print and electronic resources are discussed, and the author has selected only those items that contribute to an understanding of the issues involved. --Publisher's description

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Legal research guide to mechanical patent litigation
Available , 3rd Floor Stacks ; KF3155 .F58 1995
Floyd, Adam V.
1995

Patent Prosecution

11th annual Advanced patent law institute vol. 1
Available , 3rd Floor Stacks ; KF3114.A2 A38 2006
Advanced Patent Law Institute (11th : 2006 : Austin, Tex.); University of Texas at Austin. School of Law. Continuing Legal Education.
2006
Distinguished judges discuss their experiences hearing and trying patent cases, with a focus on concurrent proceedings, stays, and IPRs. --Publisher's website
11th annual Advanced patent law institute vol 2.
Available , 3rd Floor Stacks ; KF3114.A2 A38 2006
Advanced Patent Law Institute (11th : 2006 : Austin, Tex.); University of Texas at Austin. School of Law. Continuing Legal Education.
2006
Distinguished judges discuss their experiences hearing and trying patent cases, with a focus on concurrent proceedings, stays, and IPRs.-- Publisher's website.
Manual of patent examining procedure.
Available in print and online through the USPTO and older versions available through HeinOnline
Available , 3rd Floor Stacks ; KF3120.A6 P37
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Foreword
This Manual is published to provide U.S. Patent and Trademark Office (USPTO) patent examiners, applicants, attorneys, agents, and representatives of applicants with a reference work on the practices and procedures relative to the prosecution of patent applications and other proceedings before the USPTO. For example, the Manual contains instructions to examiners, as well as other material in the nature of information and interpretation, and outlines the current procedures which the examiners are required or authorized to follow in appropriate cases in the normal examination of a patent application. The Manual does not have the force of law or the force of the rules in Title 37 of the Code of Federal Regulations.

A separate manual entitled “Trademark Manual of Examining Procedure,” availlable at https://tmep.uspto.gov/ RDMS/TMEP/current, is published by the USPTO as a reference work for trademark cases.

Examiners will be governed by the applicable statutes, rules, decisions, and orders and instructions issued by the Director of the USPTO and other officials authorized by the Director of the USPTO.

Subsequent changes in practice and other revisions will be incorporated in the form of revisions to sections of chapters and/or to appendices of the Manual.

This Manual has been designated guidance document USPTO-P-1. The contents of this document do not have the force and effect of law and are not meant to bind the public in any way. This document is intended only to provide clarity to the public regarding existing requirements under the law or agency policies. --USPTO.Gov
Patent prosecution : practice & procedure before the U.S. Patent Office (2003-2019)
Available , 3rd Floor Stacks ; KF3120 .D66 2003
Donner, Irah H.
©2003; 3rd ed.
Patent prosecution : law, practice, and procedure Donner, Irah H. (2007-2019)
Available , 3rd Floor Stacks ; KF3120 .D66 2007
Donner, Irah H.
©2007; 5th ed.
This is a three-volume set updated every two years. The Chastek Library has 15 volumes (with the most recent being from 2019) and additional supplements.
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"The treatise provides element-by-element analysis of the substantive areas of patent law by drawing on author Irah Donners' years of research and practical experience. The new Sixth Edition covers cases interpreting the following claim terminology: Power Conversion Circuit, Smooth, Retention Member, Divider Member, Channel, Frame Member, Display Device, Display Module, Portable, Computer, and Computer System."--Publisher's website.

Historical resources

Below are books on trademark law that are outdated for modern law but provide historical context or serve as an excellent starting point for scholarly research on the topic.

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Patent law handbook.
Rose, Gerald, 1930-
1978-
The encyclopedia of patent practice and invention management; a comprehensive statement of the principles and procedures in solicitation, enforcement, and licensing of patents and recognition and utilization of inventions
Available , 3rd Floor Stacks ; KF3109.5 .C3 1974
Calvert, Robert, 1889-1969.
1974, c1964
Patent litigation
Available , 3rd Floor Stacks ; KF3113 .A5 1933
Amdur, Leon H. (Leon Harney), 1898-
c1933
United States Bicentennial Commemorative Edition of proceedings and addresses : celebration of the beginning of the second century of the American patent system at Washington City, D.C., April 8, 9, 10, 1891
Available , 3rd Floor Stacks ; KF3114.A2 C37 1990
Banner, Donald W., 1924-2006.; Foundation for a Creative America.; United States. Patent Office.
1990; Bicentennial commemorative ed.
Patent Law and Practice
Available , 3rd Floor Stacks ; KF3114 .S38 1988
Schwartz, Herbert F.; Federal Judicial Center.
1988
The patent royalty contract
Available , 3rd Floor Stacks ; KF3114 .Z3 1933
Zabel, Max W. (Max William), 1876-
1933
Ideas, inventions, and patents: how to develop and protect them. Buckles, Robert A.
Available , 3rd Floor Stacks ; KF3114.3 .B8 1957
Buckles, Robert A.
1957
Patents and industrial property--2d: practical guidelines for the corporate counsel and non-specialist.
Available , 3rd Floor Stacks ; KF3114.3 .P362 1972
Landis, John L.; Practising Law Institute.
1972
Patent Claims. Vol 1-3
Available , 3rd Floor Stacks ; KF3120 .D48 1971
Deller, Anthony William.; Lipscomb, Ernest Bainbridge, III, 1941-; Ellis, Ridsdale, 1886-1955.
1971; 2d ed., by Anthony W. Deller.
Patent law in the research laboratory. Wise, John Kenneth.
Available , 3rd Floor Stacks ; KF3131.Z9 W53
Wise, John Kenneth.
1977
Patent assignments.
Available , 3rd Floor Stacks ; KF3149 .E55 1955
Ellis, Ridsdale, 1886-1955.
1955; 3d ed.
Handbook on patent disputes
Available , 3rd Floor Stacks ; KF3155 .S34 1974