U.S. Patent Opinions and Evaluations

U.S. Patent Opinions and Evaluations

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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 Bankruptcyshow more

Product details

  • Paperback | 1072 pages
  • 154.94 x 233.68 x 60.96mm | 1,496.85g
  • Oxford University Press Inc
  • New York, United States
  • English
  • Reprint
  • 0195367278
  • 9780195367270

About David L. Fox

David Fox is Of Counsel, Osha Liang LLP. In addition to a J.D. from Loyola University, he has a PhD in microbiology from Columbia University. His experience extends from scientific publishing and research in the areas of molecular biology, cancer biology, immunology, microbiology, biotechnology, and agriculture to practicing intellectual property law, including opinions, licensing, litigation and prosecution in all areas, including biotechnology and chemistry.show more

Review quote

"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 U.S. patent opinions and evaluations. Non-attorney businesspersons 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, JD, PhD 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 Hedenstr m, 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 "Unlike many US publications which, one accepts are written specifically for the large and vibrant domestic US market, this one is so accessible to the non-US reader that one wonders if it wasn't written with the non-dom market in mind. Its charms are not confined to the regular text either: helpful Appendices give sample outlines of non-infringement and invalidity opinions, whether alone or combined with one another. Other topics covered and which the non-US reader must take care to appreciate include that graveyard of many a good intention, the waiver of attorney-client privilege." -show more

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 INDEXshow more

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