U.S. Patent Opinions & Evaluations

U.S. Patent Opinions&Evaluations authored by David L. Fox: 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 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. This second edition Features a first-of-its-kind discussion of opinions of non-willful infringement based on the Seagate two-prong test for objective willfulness and an evaluation of the test, including analyses of Federal Circuit decisions applying the test. The case law, including Bilski and developments in indirect and joint infringement, has been completely updated, along with effects on willfulness, including updates related to the America Invents Act of 2011. Finally, the book has been restructured for easier use by attorneys preparing opinions and for 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.

Features

•   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

Reviews

"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 US patent opinions and evaluations. Non-attorney business persons 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, J.D., Ph.D., 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