New 2010 Cumulative Supplement to Drafting Patents for Litigation and Licensing Offers a Guide Through the Minefield of Court Decisions that Affect the Scope and Validity of Patents

ARLINGTON, Va., Sept. 14 /PRNewswire-USNewswire/ -- BNA Books, a division of specialized news and information publisher BNA, announced today the publication of the 2010 Cumulative Supplement to Drafting Patents for Litigation and Licensing. The supplement and its main volume are published by BNA Books, and are written by members of the American Bar Association Section of Intellectual Property Law.

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. It 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 2010 Cumulative Supplement to Drafting Patents for Litigation and Licensing provides analysis of the latest cases, including:

• Prometheus Laboratories, Inc. v. Mayo Collaborative Services, applying the Federal Circuit's "machine-or-transformation" test to medical treatment claims
• Abbott Laboratories v. Sandoz, Inc., clarifying conflicting precedent and holding that product-by-process claims are not infringed unless the accused product was actually produced by the recited process
• The Forest Group, Inc. v. Bon Tool Co., imposing liability for mismarking patent numbers on every article sold by the patent owner
• Cardiac Pacemakers, Inc. v. St. Jude Medical, Inc., overruling earlier precedent and holding that exporting a component overseas that is used to perform a U.S.-patented method does not give rise to infringement under 35 U.S.C. Section 271(f)

The 2010 Cumulative Supplement also covers new topics such as software module claims for computer-related inventions, prior art considerations for drafting design patent claims, and drafting claims of different scope in electrical cases. Updated information includes obviousness issues in mechanical patent applications after KSR; reliance on drawing figures in mechanical applications; the USPTO's application of the "machine-or-transformation" test after Bilski; and the use of product-by-process claims in chemical and pharmaceutical patents.

The editor-in-chief of Drafting Patents for Litigation and Licensing, and its 2010 Cumulative 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.

Section publications provide a balanced forum for the views and professional development of practitioners in intellectual property law. For more information on Section participation, please call the Section at (312) 988-6264 or visit www.abanet.org/intelprop/home.html.

BNA is a leading private publisher of news and information products for professionals in law and business. In addition to the 2010 Cumulative Supplement to Drafting Patents for Litigation and Licensing, BNA's Book Division publishes Anatomy of a Patent Case; Biotechnology and the Federal Circuit; Constructing and Deconstructing Patents; Copyright Law Deskbook; Drafting Patent License Agreements; Electronic and Software Patents; 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; Trademark Litigation Practice 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 2010 Cumulative Supplement to Drafting Patents for Litigation and Licensing may be purchased alone (248 pp. Softcover/Order # 1888-PRY0/$195.00 plus tax, shipping, and handling) or with the main volume (2008/Order #9888-PRY0/$435.00, 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.

Editors: Review copy available upon request.

Please e-mail Matt Greene at [email protected], or call 703-341-5767.

SOURCE BNA Books