First to File: Patents for Today's Scientist and Engineer

First to File: Patents for Today's Scientist and Engineer

by M. Henry Heines
Released October 2014
Publisher(s): Wiley-AIChE
ISBN: 9781118933176

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Book description

Bridges the gap between the realistic needs and questions of scientists and engineers and the legal skills of professionals in the patent field at a level accessible to those with no legal training

  • Written for inventors in lay terms that they can relate to or easily follow

  • Lays out the new features of patent law introduced by the America Invents Act of 2012

  • Explains the differences between the first-to-invent and first-to-file rules and why the two rules will coexist

  • Focuses on the growth of new technologies in industry versus the laws protecting them

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    Table of contents

    1. Cover
    2. Title page
    3. Copyright page
    4. List of Figures
    5. List of Tables
    6. Preface
    7. Introduction
    8. About the Author
    9. Chapter 1: The First-to-File Rule
      1. 1.1 History of the First-to-File Rule in the United States
      2. 1.2 “Who's on First?”: The Rule and Its Application
      3. 1.3 Adapting Business Routines to the First-to-File Rule
    10. Chapter 2: Prior Art before and after the AIA
      1. 2.1 Prior Art and the First-to-File Rule
      2. 2.2 “But Is It Art?”: The Art of Prior Art
      3. 2.3 And Is It “Prior”?: Pre-AIA Law vs. the AIA
      4. 2.4 A Servant of Two Masters?: The “Effective Filing Date” and Its Role in Determining the Governing Rule
      5. 2.5 Conclusion
    11. Chapter 3: Creating One's Own Prior Art
      1. 3.1 The On-Sale Bar
      2. 3.2 The Publication Bar: Publish and Perish?
      3. 3.3 Observations
    12. Chapter 4: Canceling Prior Art and Other Benefits of Record Keeping
      1. 4.1 Derivation Proceedings
      2. 4.2 Disqualifying Reference Materials as Prior Art
      3. 4.3 Records Showing Collaboration
      4. 4.4 Records of Public Disclosures and Commercial Uses
      5. 4.5 Laboratory Notebooks
    13. Chapter 5: Inventing in an Employment Environment
      1. 5.1 Project Management and the New Definition of Prior Art
      2. 5.2 Allowing the Employer to Stand in for the Inventor
      3. 5.3 What Constitutes an Obligation to Assign?
      4. 5.4 Implying an Obligation to Assign When There Is No Express Agreement
      5. 5.5 Having a “Sufficient Proprietary Interest” Other than by Assignment or Obligation to Assign
      6. 5.6 When No Assignment, Obligation to Assign, or Proprietary Interest: The “Shop Right”
    14. Chapter 6: The Novelty Threshold
      1. 6.1 Anticipation and the “All Elements in a Single Reference” Rule
      2. 6.2 Novelty in the Arrangement of Parts
      3. 6.3 Another Argument Against Anticipation: The “Nonenabling Reference”
      4. 6.4 Caution: A Reference Can Anticipate an Invention Even if It “Teaches Away” from the Invention
      5. 6.5 Novelty versus Anticipation among Genus, Subgenus, and Species
      6. 6.6 Are We Done?
    15. Chapter 7: Confronting the Prior Art
      1. 7.1 “But Every Invention Is a Combination of Old Elements!”
      2. 7.2 Pursuing the Unpredictable
      3. 7.3 In Hindsight (and Other Obvious or Nonobvious Thoughts)
    16. Chapter 8: The View from the Infringer's Side
      1. 8.1 Do  You Really Want to Go to Court?
      2. 8.2 Selecting Claims
      3. 8.3 Options for Challenge before the Patent Is Granted
      4. 8.4 Options for Challenge after  the Patent Is Granted
    17. Chapter 9: Patent Eligibility
      1. 9.1 Medical Diagnostic Methods
      2. 9.2 Computer-Implemented Processes
      3. 9.3 Business Methods
      4. 9.4 The AIA's New Procedure for Challenging Business Method Patents
      5. 9.5 Conclusion: A Rule for Patent Eligibility? or a Case of “I'll Know It When I See It”?
    18. Chapter 10: Selected Topics in Patent Strategy
      1. 10.1 Provisional Patent Applications
      2. 10.2 Strategies in Claim Construction
    19. Chapter 11: Patents and Beyond
      1. 11.1 Trade Secrets
      2. 11.2 Trademarks
      3. 11.3 Copyrights
      4. 11.4 Design Patents
      5. 11.5 IP Coverage for Plants
      6. 11.6 Conclusion
    20. Appendix A: Selected Fees Charged by U.S. Patent and Trademark Office and Other U.S. Agencies for Intellectual Property as of January 1, 2014
    21. Appendix B: Patent Searchers
    22. Acronym Glossary
    23. Glossary
    24. Bibliography, Websites, and Blogs
      1. Books
      2. Government Publications
      3. Websites
      4. Blogs
    25. Patents and Published Patent Applications Cited
    26. Cases Cited
    27. Index
    28. End User License Agreement

    Product information

    • Title: First to File: Patents for Today's Scientist and Engineer
    • Author(s): M. Henry Heines
    • Release date: October 2014
    • Publisher(s): Wiley-AIChE
    • ISBN: 9781118933176