Synopsis
U.S. Patent Prosecutor's Desk Reference (2015 Edition) by Joshua P. Graham & Thomas G. Marlow, assists patent prosecutors in responding to Office Actions issued by the United States Patent and Trademark Office (USPTO) rejecting patent application claims. It is a quick, reliable reference to assist prosecutors in creating, researching, and supporting patentability arguments. Each section of the reference work includes the basis for the rejection, responses to the rejection, and legal authority supporting the responses. The 2015 Edition cites to the Manual of Patent Examining Procedure Ninth Edition (March 2014 Revision) and offers comprehensive and updated sources of law that correspond to recent rejections made by the USPTO.
Features
• Assists patent prosecutors in responding to Office Actions issued by the U.S. Patent and Trademark Office rejecting patent application claims
• Provides a comprehensive and updated source of law, organized by sections corresponding to the types of rejections made by the USPTO
• Cites five different authority sources: statutes, the "Manual of Patent Examining Procedure, 8th Edition;" decisions by the Patent Trial and Appeal Board (PTAB), the U.S. Court of Customs and Patent Appeals, and the U.S. Court of Appeals for the Federal Circuit
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About the Author
Joshua P. Graham is Patent Counsel for Research In Motion, where he is a patent prosecutor and portfolio manager for the Advanced Technology group. Previously, he worked for Merchant and Gould, where his practice focused on patent litigation and appeals as well as proceedings in the U.S. Patent and Trademark Office. Mr. Graham was also a judicial intern for the Honorable Steven J. McAuliffe, Chief Judge of the U.S. District Court for the District of New Hampshire.
Thomas G. Marlow is Intellectual Property Counsel and Director at Fairchild Semiconductor, where he manages worldwide product line and business unit patent strategy, enforcement, and procurement. His work includes generating a strong intellectual property portfolio around Fairchild's current and future technology focus areas. Previously, Mr. Marlow worked for Schwegman, Lundberg & Woessner, where his patent practice included prosecution and analysis of technologies in the electronic arts, including semiconductors, integrated circuit design and fabrication, wireless communications, and computer networks.
Review
"After reviewing Graham & Marlow's new desk reference for patent prosecution, I kept asking myself why no one had ever published anything like this before. In short, this is an absolutely wonderful resource for patent prosecutors who need to quickly draft effective and authoritative responses to a myriad of different USPTO rejections. You can either spend hours delving through a confusing array of regulations and court decisions, or you can pick up this desk reference and get the guidance and authorities you need for most prosecution questions in less than two minutes. I would strongly recommend it for any prosecutor." - Steven W. Lundberg Patent attorney and a founding partner of Schwegman, Lundberg & Woessner"The U.S. Patent Prosecutor's Desk Reference is an essential practice guide for every patent attorney. It is much easier to rebut an Examiner's rejection when you have at your fingertips a collection of decisions by the CAFC, CCPA and BPAI in which the Examiner's rejection was reversed. Because these decisions are organized by rejection type, you can quickly find authority to bolster your argument that a particular rejection is improper. Using this reference will make even experienced patent prosecutors more efficient and effective." - Ann McCrackin Professor of Law and Director of the Patent Prosecution Program University of New Hampshire School of Law (formerly Franklin Pierce Law Center)
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