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U.S. Patent Opinions and Evaluations, 2nd Edition

U.S. Patent Opinions and Evaluations, 2nd Edition

Author: David L. Fox
Publisher: Oxford University Press USA
ISBN: 9780199751105
Published In: January 2013
Format: Paperback , 906 pages
Jurisdiction: U.S. ? Disclaimer:
Countri(es) stated herein are used as reference only

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Written by a well-respected senior counsel and PhD with years of extensive experience in intellectual property law as well as biotechnology and chemistry
Uses a unique, strategic approach to provide guidance and real-life examples for patent litigation
Comprehensive and forward-looking approach to patent evaluations and opinions with helpful practice tips and subject-matter organization for ease of reference

Patent opinions and evaluations are used in virtually all endeavors involving United States patents, including litigation, prosecution, licensing, product design, product launch, evaluation for acquisition or disposition of intellectual property, bankruptcy, and U.S. securities issues. In U.S. Patent Opinions and Evaluations, David L. Fox provides expert, up-to-date, practical advice and guidance on the four principle issues of patent opinions and evaluations: claim construction and claim scope, infringement, validity, and enforceability. The second edition of this comprehensive book features a first-of-its-kind discussion of opinions of non-willful infringement based on the Seagate two-prong test for objective willfulness, including an analysis of the test and the Federal Circuit decisions that have applied it. The case law, including Bilski, and developments in indirect and joint infringement, has been completely updated, along with effects on willfulness. This new edition of U.S. Patent Opinions and Evaluations has also been restructured for easier use by attorneys preparing opinions and those relying on these opinions.

David L. Fox masterfully addresses the needs of the practicing attorney preparing a patent opinion, combining discussions and the framework of the current law with specific practice tips. He also provides clear, straight-forward guidance for non-patent professionals on the principles of U.S. patent law and the fundamentals of U.S. patent opinions and evaluations, allowing them to better understand and rely on them. U.S. Patent Opinions and Evaluations covers everything from general issues--including overviews of opinions, rules for preparing competent opinions, and waiver to nuts-and-bolts issues such as claim construction and claim scope, infringement, validity, and enforceability. The "Practice Tips" and the appendices provide further practical guidance by setting forth exemplary outlines of opinions and evaluations. A subject index enables quick and easy use of the book as a reference for specific topics.

Readership: US patent attorneys, both law firm and in-house

Preface: How to Best Use This Book
Chapter 1 Evaluations and Opinions of U.S. Patents: Overview
I. How to Use This Treatise/Highlights of the Treatise
II. Overview of Evaluations and Opinions of U.S. Patents
III. The Four Patent Law Principles That Apply to Evaluations and Opinions of U.S. Patents
IV. Evaluations and Opinions of Third Party Patent Rights
V. Evaluating and Opining on One's Own Patent Rights
VI. Legal Competency of (and Reliance on) Opinions to Avoid Willful Infringement
VII. Waiver of Attorney-Client Privilege and Work-Product Immunity Issues with Evaluations and Opinions of U.S. Patents
VIII. Sample Outlines of Noninfringement and Invalidity Opinions
IX. Detailed Subject Matter Index and Case, Statute and Rule Index
Chapter 2 Patent Law Principle I: Claim Construction
I. Virtually All Patent Evaluations and Opinions Must Construe Claims
II. The Claims Define the Scope of the Patent Grant
III. Evidence for Claim Construction
IV. Current Law of the Process of 6

David L. Fox, Senior Counsel, Fulbright & Jaworski L.L.P.

David L. Fox is a senior counsel in Fulbright & Jaworski L.L.P.'s Houston office. 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 of biotechnology and chemistry.