U.S. patent opinions and evaluations
Author(s)
Bibliographic Information
U.S. patent opinions and evaluations
Oxford University Press, c2010
- : pbk
- Other Title
-
United States patent opinions and evaluations
Available at 3 libraries
  Aomori
  Iwate
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  Nagano
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  Shizuoka
  Aichi
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  Kyoto
  Osaka
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  Nara
  Wakayama
  Tottori
  Shimane
  Okayama
  Hiroshima
  Yamaguchi
  Tokushima
  Kagawa
  Ehime
  Kochi
  Fukuoka
  Saga
  Nagasaki
  Kumamoto
  Oita
  Miyazaki
  Kagoshima
  Okinawa
  Korea
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  Thailand
  United Kingdom
  Germany
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  France
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  United States of America
Note
Includes bibliographical references and indexes
Contents of Works
- Evaluations and opinions of U.S. patents : overview
- Patent law principle I : claim construction
- Patent law principle II : infringement : literal infringement
- Patent law principle II : infringement : the doctrine of equivalents
- Patent law principle II : infringement : indirect infringement, divided infringement, and Section 271(e)(1) "safe harbor"
- Patent law principle III : validity : general principles of anticipation and anticipation by printed publication
- Patent law principle III : validity : other forms of anticipation
- Patent law principle III : validity : obviousness
- Patent law principle III : validity : other forms of invalidity
- Patent law principle IV : enforceability
- Evaluating and opining on third party patents : patent due diligence for mergers, acquisitions, and licensing
- Evaluating and opining on third party patent rights : evaluations and opinions of patents for clearance (freedom to operate), noninfringement, invalidity, and unenforceability
- Evaluating and opining on third party patent rights : opinions for avoiding willful infringement
- Evaluating and opining on third party patent rights : prefiling Rule 11 and section 285 investigations in declaratory judgment actions, ANDA paragraph IV certifications, avoidance of preliminary injunctions, and readiness in "rocket docket" jurisdictions
- Evaluating and opining on third party patent rights : prefiling evaluations and opinions for ex parte and inter partes reexamination and other post-grant patent challenges
- Evaluating and opining on one's own patent rights : SEC considerations, patent audits, and a businessperson's guide to evaluations and opinions of U.S. patents
- Evaluating and opining on one's own patent rights : evaluations and opinions of patentability for potentially new inventions
- Evaluating and opining on one's own patents : strategic patenting, including patent landscapes, evaluations and opinions of claim scope/infringement, validity, enforceability, and ownership
- Evaluating and opining on one's own patent rights : defensive due diligence, pre-sale and pre-licensing evaluations and opinions of patents
- Evaluating and opining on one's own patent rights : pre-filing rule 11 and section 285 investigations and compliance, FDA orange book patent listing, obtaining preliminary injunctions, and for readiness in "rocket docket" jurisdictions and ITC investigat
- Evaluating and opining on one's own patent rights : prefiling evaluations and opinions for post-grant corrections including reexamination, reissue, disclaimer, certificates of correction, and other issues
- Evaluating and opining on one's own patent rights : evaluations and opinions of patents in bankruptcy and related issues
- Competency of, and reliance on, opinions for avoiding willful infringement
- Waiver of attorney-client privilege and work product immunity
Description and Table of Contents
Description
This book provides expert, up-to-date, practical advice and guidance on the four principle issues of patent evaluations and opinions, including: (1) claim construction and claim scope; (2) infringement; (3) validity; and (4) enforceability.
The book teaches how to apply these four principles to the many uses of patent opinions, including: - Evaluating and Opining on Third-Party Patents for: --- Willful Infringement Risk Analyses --- Invalidity and Noninfringement Investigations and Opinions for Avoidance of Willful Infringement ---Infringement Risk and Patent Portfolio Analyses and Reporting for SEC Compliance, Including Sarbanes-Oxley Reporting --- Clearance (Freedom to Operate) Investigations and Opinions for New Products and Process --- Design-Around Investigations and Determinations --- Pre-Purchase and Pre-License Investigations of Patent Scope, Validity, and Enforceability --- Pre-Filing Investigations for Ex Parte Reexamination and Other Post-Grant Challenges L - Evaluating and Opining on One's Own Patent Rights for: --- Pre-Filing Infringement, Validity, and Enforceability Investigations for Rule 11 Compliance --- Evaluation of Patent Portfolio Strength and Scope --- Pre-Filing Investigations for Reexamination and Reissue Filings --- Pre-Sale and Pre-Licensing Investigations of Patent Scope, Validity, and Enforceability ---Protecting and Maximizing Patent Rights in Bankruptcy
Table of Contents
- PREFACE HOW TO BEST USE THIS BOOK
- CHAPTER 1 OVERVIEW AND USES OF PATENT NONINFRINGEMENT AND INVALIDITY
- OPINIONS
- I. PURPOSES AND USES OF PATENT NONINFRINGEMENT AND INVALIDITY OPINIONS
- II. NONINFRINGEMENT OPINIONS
- III. INVALIDITY OPINIONS
- CHAPTER 2 COMPETENCY OF OPINIONS
- I. REQUIREMENT FOR COMPETENT OPINION
- II. CLAIM CONSTRUCTION REQUIRED
- III. RELIANCE OF CITED, UP-TO-DATE, PROPERLY INTERPRETED LAW
- IV. TIMING FOR OPINIONS
- V. NONINFRINGEMENT OPINIONS
- VI. INVALIDITY OPINIONS
- VII. FINAL OPINION SHOULD BY IN WRITING
- VIII. LEVEL OF CERTAINTY
- IV. PRACTICE TIPS
- CHAPTER 3 TIMING, NECESSITY OF, AND RELIANCE ON OPINIONS
- I. KNORR-BREMSE CASE
- II. READ FACTORS REMAIN
- III. BEST TO OBTAIN OPINION UPON LEARNING OF POTENTIALLY INFRINGED PATENT
- IV. WAIVER
- V. PRACTICE TIPS
- CHAPTER 4 WAIVER OF ATTORNEY-CLIENT PRIVILEGE AND WORK-PRODUCT IMMUNITY
- I. PRODUCTION OF OPINION
- II. WAIVER OF ATTORNEY-CLIENT PRIVILEGE
- III. OTHER WAIVERS
- IV. PRACTICE TIPS
- CHAPTER 5 CLAIM CONSTRUCTION
- I. COMPETENT OPINION MUST CONSTRUE CLAIMS
- II. EVIDENCE FOR CLAIM CONSTRUCTION
- III. CLAIM CONSTRUCTION
- VII. PRACTICE TIPS
- CHAPTER 6 ESTABLISHING BASIS FOR NONINFRINGEMENT OPINIONS
- I. COMPETENT OPINION MUST CONSTRUE CLAIMS
- II. BURDEN OF PROOF FOR NONINFRINGEMENT IS PREPONDERANCE OF THE EVIDENCE (CENTRICUT)
- III. CAREFULLY AND ACCURATELY DESCRIBE CLIENT'S TECHNOLOGY
- IV. ADVISE CLIENT IN WRITING, IN FINAL OPINION, THAT NONINFRINGEMENT ANALYSIS AND OPINION ARE BASED SOLELY ON CLIENT'S PRODUCT AND/OR PROCESS AS DESCRIBED IN OPINION, AND THAT ANY CHANGES TO PRODUCT AND/OR PROCESS MUST BE EVALUATED ANEW FOR NONINFRINGEMENT
- IV. A. BEGIN WITH ANALYSIS OF LITERAL INFRINGEMENT
- V. PRACTICE TIPS
- CHAPTER 7 LITERAL INFRINGEMENT
- I. LITERAL INFRINGEMENT (35 U.S.C. 271(A))
- II. SPECIAL RULES
- III. DOCTRINE OF EQUIVALENTS MUST BE ADDRESSED IF NO LITERAL INFRINGEMENT
- IV. PRACTICE TIPS
- CHAPTER 8 DOCTRINE OF EQUIVALENTS
- I. INFRINGEMENT UNDER THE DOCTRINE OF EQUIVALENTS
- II. DEFINING EQUIVALENTS
- III. SPECIAL CLAIM CONSTRUCTION RULES FOR EQUIVALENTS
- IV. SPECIAL RULES
- V. PRACTICE TIPS
- CHAPTER 9 NON-DIRECT INFRINGEMENT, EXPERIMENTAL USE, AND IMPLIED LICENSE
- I. DIRECT INFRINGEMENT (35 U.S.C. 271(A))
- II. NON-DIRECT INFRINGEMENT
- III. INDUCEMENT
- IV. CONTRIBUTORY INFRINGEMENT
- V. FOREIGN ACTIVITY
- VI. IMPORTATION OF PRODUCT MADE BY METHOD CLAIM
- VII. EXPERIMENTAL USE EXEMPTION (35 U.S.C. 271(E)(1))
- VIII. IMPLIED LICENSE
- IX. PRACTICE TIPS
- CHAPTER 10 ESTABLISHING THE BASIS FOR INVALIDITY OPINIONS
- I. COMPETENT OPINION MUST CONSTRUE CLAIMS
- II. BURDEN OF PROOF FOR PATENT INVALIDITY IS CLEAR AND CONVINCING EVIDENCE (TYPERIGHT KEYBOARD)
- III. MULTIPLE AVENUES TO PROVE INVALIDITY
- IV. NO NEED TO EVALUATE CLIENT'S TECHNOLOGY
- V. PRACTICE TIPS
- CHAPTER 11 ANTICIPATION BY PRINTED PUBLICATION
- I. THE INVENTION WAS DESCRIBED IN A PRINTED PUBLICATION MORE THAN ONE YEAR BEFORE THE PRIORITY DATE (35 U.S.C. 102(B))
- II. QUALIFYING THE PRIOR ART
- III. SINGLE SOURCE OF PRIOR ART MUST CONTAIN ALL OF THE LIMITATIONS OF THE CLAIM, EXPRESSLY OR INHERENTLY (METABOLITE LABORATORIES)
- IV. WEIGHT OF PRIOR ART
- V. PARENT APPLICATION AS PRIOR ART AGAINST CONTINUATION-IN-PART PATENT
- IV. PRACTICE TIPS
- CHAPTER 12 OTHER FORMS OF ANTICIPATION
- I. ON SALE BAR, 35 U.S.C. 102(B)
- II. PUBLIC USE, 35 U.S.C. 102(B)
- III. KNOWN OR USED BY OTHERS IN THE U.S., 35 U.S.C. 102(A)
- IV. PATENTED OR DESCRIBED IN A PRINTED PUBLICATION, 35 U.S.C. 102(A)
- V. DESCRIBED IN A U.S. PATENT APPLICATION PUBLISHED BY ANOTHER FILED IN THE U.S. BEFORE THE INVENTION DATE, 35 U.S.C. 102(E)(1)
- VI. DESCRIBED IN A U.S. PATENT BY ANOTHER FILED IN THE U.S. BEFORE THE INVENTION DATE, 35 U.S.C. 102(E)(2)
- VII. DERIVATION, 35 U.S.C. 102(F)
- VIII. PRIOR INVENTION, 35 U.S.C. 102(G)
- IX. PRACTICE TIPS
- CHAPTER 13 OBVIOUSNESS
- I. OVERVIEW
- II. ESTABLISHING A PRIMA FACIE CASE OF OBVIOUSNESS
- III. EVIDENCE FOR REBUTTAL OF PRIMA FACIE CASE OF OBVIOUSNESS: GRAHAM SECONDARY CONSIDERATIONS
- IV. SECONDARY FACTORS CANNOT REBUT A CLEAR CASE OF OBVIOUSNESS (GRAHAM)
- V. SUMMARY OF NONOBVIOUSNESS OPINION
- VI. PRACTICE TIPS
- CHAPTER 14 OTHER FORMS OF INVALIDITY, UNENFORCEABILITY
- I. WRITTEN DESCRIPTION, 35 U.S.C. 112, FIRST PARAGRAPH
- II. ENABLEMENT, 35 U.S.C. 112, FIRST PARAGRAPH
- III. BEST MODE, 35 U.S.C. 112, FIRST PARAGRAPH
- IV. INDEFINITENESS, 35 U.S.C. 112, SECOND PARAGRAPH
- V. UTILITY, 35 U.S.C. 101
- VI. INEQUITABLE CONDUCT, UNENFORCEABILITY
- VII. PRACTICE TIPS
- APPENDIX A SAMPLE OUTLINE OF NONINFRINGEMENT OPINION
- APPENDIX B SAMPLE OUTLINE OF INVALIDITY OPINION
- APPENDIX C SUBJECT MATTER INDEX
by "Nielsen BookData"