US Patent Law for European Patent Professionals

US Patent Law for European Patent Professionals

US Patent Law for European Patent Professionals

By Audrey Nemeth
Publish Date
Product Line
Kluwer Law International
Available formats


This is the first book that has been designed to make communication between European and US patent law professionals more comprehensible.

It explains exactly what is required at every stage of a patent proceeding in the United States, helping European patent professionals understand and act upon the facts. It ensures that both parties have a common understanding of basic US legal terms, and that you – a EU practitioner – will understand the available courses of action for the most common procedural scenarios.

United States patent law, like the European Patent Convention (EPC), is based on a hierarchical code of statutes, regulations and administrative guidelines. However, there are numerous important distinctions, which you’ll need to know if you are looking to successfully protect and leverage intellectual property in the United States.

This highly practical and detailed work is divided into five main parts, covering the basics of US patent law, prosecution of US applications, US patent and post grant proceedings, procedural elements, and advanced topics.

How will this help you?

Using a directly comparative presentation, the coverage includes details of US patent law and procedure, including:

  • drafting applications and filing them at the US Patent Office;
  • provisions of the America Invents Act of 2011;
  • possible responses to a Final Office Action;
  • US definitions of novelty and inventiveness;
  • types of patents recognized in the United States;
  • structure of the US Patent Office and the US court system; ;
  • variations in the definitions of basic patentability criteria;
  • types of US post-grant proceedings and third-party submissions;
  • appeal proceedings at the US Patent and Trademark Office;
  • inventor’s oath;
  • foreign filing license;
  • cost and time periods for various procedural acts;
  • the work of US patent attorneys, agents and examiners;
  • uses of the US Manual of Patent Examination Procedure (MPEP); and
  • the US provisional application procedure.

The work describes every step in the process, and compares the way it operates under both the EPC and US patent law.

Who should read this book?

This is the only source of instantly accessible information on US law for European patent lawyers, in-house counsel, or EPC or national patent office officials. If you are an intellectual property law academic or student, you’ll also benefit from the book’s comparative approach.

ISBN: 9789041160447
Pages: 248
SKU: 9041160442
ETA: Available: Item ships in 3-5 Business Days

Foreword by David Molnia



List of Tables

List of Figures

List of Abbreviations

PART I The Basics of US Patent Law

Chapter 1 Legal Codes Underlying the US Patent System

Chapter 2 Types of Patents and Corresponding Types of Applications

Chapter 3 Patentability: Requirements and Exceptions

PART II Prosecution before the USPTO. A Preparing and Filing a US Patent Application

Chapter 4 Drafting a Patent Application and Preparing to File

Chapter 5 Filing the Application and the Start of Prosecution

B Prosecution: Proceedings Up to Grant

Chapter 6 Examination: Responding to Office Actions

Chapter 7 Novelty as Defined in the US

Chapter 8 Inventiveness as Defined in the US

Chapter 9 What Is a Final Rejection and How to Respond

Chapter 10 Allowance and Issue

C Appeal

Chapter 11 Appeal Proceedings at the USPTO

PART III The US Patent and Post-grant Proceedings

Chapter 12 The US Patent and Protection Conferred

Chapter 13 USPTO Proceedings Corresponding to Opposition at the EPO.

Chapter 14 USPTO Proceedings Corresponding to Article 105a EPC (Requests for Limitation or Revocation)

PART IV Index of Procedural Elements

Chapter 15 Alphabetic Index of Procedural Elements

PART V Advanced Topics in US Patent Law

Chapter 16 Structure of the USPTO and the US Court System

Chapter 17 Careers in IP: USPTO Examiners and Types of US Legal Representative

Chapter 18 History of IP in the US Up to the AIA

Chapter 19 The America Invents Act

Chapter 20 Doctrines and Principles of US Patent Law



APPENDIX A.2 37 CFR, Part 1 (Rules of Practice in Patent Cases)

APPENDIX B.1 USPTO Patent Process Flowchart

APPENDIX B.2 Application Data Sheet

APPENDIX B.3 Information Disclosure Statement

APPENDIX B.4 Inventor’s Oath or Declaration

APPENDIX C Relevant Portions of the America Invents Act