Thursday 4 March 2010

A matter of Opinion ...

U.S. Patent Opinions and Evaluations is the title of a most impressive book by David L. Fox (senior counsel, Fulbright & Jaworski), published late last year by Oxford University Press. According to the web-blurb,

"this book provides expert, up-to-date, practical advice and guidance on the four principal issues of patent evaluations and opinions, including: (1) claim construction and claim scope; (2) infringement; (3) validity; and (4) enforceability.

The book teaches how to apply these four principles to the many uses of patent opinions, including:

Evaluating and Opining on Third-Party Patents for:

--- Willful Infringement Risk Analyses
--- Invalidity and Noninfringement Investigations and Opinions for Avoidance of
Willful Infringement
--- Sarbanes-Oxley Infringement Risk Analyses and Reporting
--- Clearance (Freedom to Operate) Investigations and Opinions for New Products and Process
--- Design-Around Investigations and Determinations
--- Pre-Purchase and Pre-License Investigations of Patent Scope, Validity, and Enforceability
--- Pre-Filing Investigations for Ex Parte Reexamination and Other Post-Grant Challenges

Evaluating and Opining on One's Own Patent Rights for:

--- Pre-Filing Infringement, Validity, and Enforceability Investigations for Rule 11 Compliance
--- Evaluation of Patent Portfolio Strength and Scope
--- Pre-Filing Investigations for Reexamination and Reissue Filings
--- Pre-Sale and Pre-Licensing

Investigations of Patent Scope, Validity, and Enforceability".

Unlike many US publications which, one accepts are written specifically for the large and vibrant domestic US market, this one is so accessible to the non-US reader that one wonders if it wasn't written with the non-dom market in mind. Its charms are not confined to the regular text either: helpful Appendices give sample outlines of non-infringement and invalidity opinions, whether alone or combined with one another. Other topics covered and which the non-US reader must take care to appreciate include that graveyard of many a good intention, the waiver of attorney-client privilege.

Bibliographic details: ISBN13: 9780195367270, ISBN10: 0195367278. xliv + 1026 pages. Price:$295. Web page here.

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