US Patent Law for European Patent Professionals: Third Edition - Paperback

by A. Nickel (Author)

The third edition of this well-known reference is unrevised from the second edition. It is addressed to European patent attorneys, paralegals, or technical specialists with experience prosecuting applications before the European Patent Office (EPO). Starting from the European perspective, differences between US and European patent law are explained in detail. Both theoretical topics as well as practical applications of peculiarities of US patent law are explained, with numerous examples and question sets to test the reader's knowledge. Topics covered include: - Legal codes underlying US patent law;- Drafting and filing a US patent application;- US applications that do not exist in Europe (e.g. provisional, continuation-in-part);- Understanding when US Office actions can be marked 'Final' and consequences thereof;- The importance of prosecution history in the US and the meaning of estoppel;- The importance of Information Disclosure Statements (IDS's) in US patent prosecution;- How to argue against "obviousness" rejections before the US Patent Office (US 'equivalents' to the EPO's Problem-Solution Approach);- How US practitioners use Examiner interviews to their advantage during prosecution;- Types of post-grant proceedings before the US Patent & Trademark Office (USPTO);- US Appeals and other appeal-like proceedings (Petitions);- Patent litigation in the US;- The America Invents Act of 2012;- History of US patent law and the USPTO;- Differences between US and European Examiners; and - Differences between US and European Patent Attorneys.Any European practitioner who has unsuccessfully tried to pursue claims in the US that were granted in Europe will gain a new understanding of the reasons why, and what to do about it.

Author Biography

The author is a leading expert in transatlantic filings in which patent protection is sought in both the US and Europe. Drawing on years of experience in prosecution and post-grant proceedings relating to inventions from a multitude of technical fields, the author addresses complex legal issues in a way that is understandable and informative for qualified European practitioners at all levels.