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The Law and Strategy of Biotechnology Patents - 1st Edition - ISBN: 9780750694445, 9781483161938

The Law and Strategy of Biotechnology Patents

1st Edition

Biotechnology Series

Editor: Kenneth D. Sibley
eBook ISBN: 9781483161938
Imprint: Butterworth-Heinemann
Published Date: 29th June 1994
Page Count: 282
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The Law and Strategy of Biotechnology Patents is a compendium of articles that sets to address and unravel the complexities of the laws and issues that apply to biotechnology inventions. The purpose of the book is to explain patent law, with special emphasis on the central role of patent claims, statutory subject matter, novelty, non-obviousness, disclosure considerations, and operation of the judicial system in relation to patents. The text also unveils the extent to which biotechnology merges established law with new requirements. Lawyers, inventors, researchers, technology development and transfer agents, venture capitalists, investment bankers, entrepreneurs, and researchers will find this book an important source of information and knowledge.

Table of Contents




Part I: Introduction

1. General Information

1.1 Using the Patent Statute Requires Planning

1.2 An Overview of the Content and Chapters

1.3 A Brief Overview of the Patent Statute

1.4 A Case Study: The Production of Acetone with Clostridium Acetobutylicum


2. Patent Claims

2.1 The Central Role of Patent Claims

2.2 General Rules of Claim Interpretation

2.3 The Practical Interpretation of Patent Claims

2.4 Examples of Patent Claims in Biotechnology


3. The Legal Decision-Making Process

3.1 The Patent Application Process

3.2 Proceedings on Issued Patents

3.3 Miscellaneous Matters


4. Ownership of Tangible and Intellectual Property

4.1 Tangible Property versus Intangible Property

4.2 Trade Secret Issues

4.3 Ownership of Intellectual Property


Part II: Basic Requirements of Patentability

5. Patentable Subject Matter

5.1 Statutory Subject Matter

5.2 Practical Utility

5.3 Operability


6. Novelty and the Public Domain

6.1 The Anatomy of Anticipatory Prior Art

6.2 When Is Prior Art Properly Applied to a Claim?

6.3 Rule 1.131—Removing Prior Art by a Showing of Prior Inventorship


7. Nonobviousness

7.1 The Basic Test

7.2 The Scope and Content of the Prior Art

7.3 The Person Having Ordinary Skill in the Art

7.4 Differences between the Prior Art and the Claimed Invention—The Invention as a Whole

7.5 Objective Evidence of Nonobviousness

7.6 Prima Facie Obviousness

7.7 Inventive Step and Nonobviousness Compared

7.8 Conclusion


Part III: Special Issues in Biotechnology Patents

8. Disclosure Requirements

8.1 The Enablement Requirement and Claim Scope

8.2 The Best-Mode Requirement

8.3 The Deposit Requirement

8.4 The Written-Description Requirement

8.5 The Claim Definiteness Requirement


9. Collaborative Research

9.1 Inventorship Issues in Collaborative Research

9.2 Correcting Inventorship

9.3 Prior Art Issues in Collaborative Research


10. Competitive Research

10.1 Priority of Invention under the First-to-Invent System

10.2 Applying the First-to-invent System to Inventions Made Outside the United States

10.3 Interference Procedure: Initiation of Interferences

10.4 Priority under the First-to-File System


11. Plant Biotechnology

11.1 Plant Patents

11.2 The Plant Variety Protection Act of 1970

11.3 Trade Secrets

11.4 Plants as Tangible Property

11.5 Utility Patents

11.6 The Strategy of Protecting Plants

11.7 International Considerations in Plant Protection


12. Foreign Patents

12.1 Avoiding Forfeiture of Foreign Patent Rights

12.2 Choosing Where to File Foreign Applications

12.3 Strategy: Preserve Foreign Rights and Defer Foreign Costs

12.4 An Approach to Securing Foreign Patents

12.5 Conclusion


Part IV: Patent Litigation

13. Substantive Aspects of Patent Litigation

13.1 The Patent Grant

13.2 Patent Infringement

13.3 Patent Validity in the Courts

13.4 Patent Enforceability in the Courts

13.5 Estoppel Applied to the Accused Infringer


14. Procedural Aspects of Patent Litigation

14.1 Steps Taken Prior to a Lawsuit

14.2 Initiating the Suit

14.3 The Discovery Phase

14.4 Determination of the Issues

14.5 Alternative Dispute Resolution and Settlement




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© Butterworth-Heinemann 1994
29th June 1994
eBook ISBN:

About the Editor

Kenneth D. Sibley

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