Patent Prosecution

Patent Prosecution

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Description

Patent Prosecution by David Boundy and Philip Furgang is an essential work that belongs on the desk of every attorney interested in obtaining the best patent possible for a client's business interests. With a highly practice-oriented approach that is both sophisticated and logical, the authors examine every aspect of patent prosecution, from the client's conception of the invention to application filing in the U.S. and foreign jurisdictions, negotiation with the U.S. Patent and Trademark Office (PTO) and patent issue and post-issue correction. Relevant statutes, rules and cases are discussed in relation to a particular task in the procedural flow. Patent Prosecution distils decades of high-level experience from two leading authorities on the subject, effectively giving readers access to a senior partner in the form of two comprehensive volumes.show more

Product details

  • Paperback | 3000 pages
  • 152 x 228 x 3mm
  • Oxford University Press Inc
  • New York, United States
  • English
  • 0195381165
  • 9780195381160

Table of contents

CHAPTER 1 THE BIG PICTURE: HOW A PATENT ATTORNEY CREATES VALUE FOR A BUSINESS ; CHAPTER 2 REPRESENTING THE CLIENT ; CHAPTER 3 KNOW WHAT THE INVENTION IS ABOUT ; CHAPTER 4 THINGS TO ASCERTAIN IN THE FIRST PHONE CALL ; CHAPTER 5 INTERVIEWING THE INVENTOR ; CHAPTER 6 PRIOR ART SEARCHES ; CHAPTER 7 STARTING TO DRAFT THE APPLICATION - STRATEGIC CONCERNS AND PRACTICAL BIG PICTURE ISSUES ; CHAPTER 8 WHAT EVERY LAWYER SHOULD KNOW ABOUT MICROSOFT WORD ; CHAPTER 9 INDEPENDENT CLAIMS ; CHAPTER 10 THE NEED TO REFINE ; CHAPTER 11 DEPENDENT CLAIMS ; CHAPTER 12 DRAWINGS ; CHAPTER 13 DESCRIPTION ; CHAPTER 14 BACKGROUND ; CHAPTER 15 THE TITLE ; CHAPTER 16 GETTING THE INVENTOR'S REVIEW ; CHAPTER 17 AFTER THE INVENTOR'S SUBSTANTIVE REVIEW, PREPARING THE APPLICATION FOR SIGNATURE AND FILING ; CHAPTER 18 INVENTORSHIP, OWNERSHIP AND ASSIGNMENTS ; CHAPTER 19 FILING DAY ; CHAPTER 20 PROVISIONAL APPLICATIONS ; CHAPTER 21 DESIGN PATENT APPLICATIONS ; CHAPTER 22 PRIOR ART AND INFORMATION DISCLOSURE STATEMENTS ; CHAPTER 23 INTERNATIONAL ISSUES ; CHAPTER 24 THE LEGAL FRAMEWORK FOR THE PTO - CONSTITUTIONAL SEPARATION OF POWERS, THE ADMINISTRATIVE PROCEDURE ACT, AND STATUTORY DIVISION OF DUTIES ; CHAPTER 25 RESTRICTION REQUIREMENTS AND ELECTION OF SPECIES ; CHAPTER 26 AMENDMENTS AND REPLIES TO OFFICE ACTIONS ; CHAPTER 27 PETITION AND APPEAL ; CHAPTER 28 CONTINUATION PRACTICE UNDER 35 U.S.C. 120 ; CHAPTER 29 ISSUANCE ; CHAPTER 30 POST-ISSUANCE - CERTIFICATE OF CORRECTION, REISSUE AND REEXAMINATION ; CHAPTER 31 CLOSING OBSERVATION ; CHAPTER 32 HEADING ONE WILL BE NEW PAGE. ; CHAPTER 33 OPINION LETTERS ; CHAPTER 34 CEASE-AND-DESIST LETTERS AND MARKINGshow more

About David E. Boundy

David Boundy is Vice President and Assistant General Counsel for Intellectual Property at Cantor Fitzgerald in New York. Previously he was in private practice with Fish & Richardson, Shearman & Sterling, and Willkie Farr & Gallagher; in June, 2007, Mr. Boundy argued as the designated representative of 25 high technology companies at a White House regulatory review of the U.S. Patent and Trademark Office's proposals to limit continuation practice and complexity of claims. Philip Furgang is a founding partner of Furgang & Adwar, where he concentrates his practice in patent, trademark, copyright, and unfair competition law.show more