Details
- 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 litigators
- Comprehensive and forward-looking approach to patent evaluations and opinions with helpful practice tips and subject-matter organization for ease of reference
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 Bankruptcy
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 Index
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.
"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 Hedenstrom, 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."
-- Jeremey Phillips, PatLit Blog
"U.S. Patent Opinions and Evaluations is recommended for any library that has practitioner patrons or academic classes that deal extensively with patent opinions."
-- Legal Information Alert
