This document announces a collaborative book. As you can see, some nice people have already volunteered to write chapters of this book. Maybe you would like to volunteer to write a chapter of this book. Maybe you would like to suggest a topic and volunteer to write the chapter on that topic. The book will be published and distributed at the lowest cost possible. As people volunteer for particular topics, I will update the list.
Here is the chapter list, which will be updated as the book comes along.
- Initial “Inventor” Interview and Invention Disclosures
- Potential ethics issues encountered in patent practice – Fred Gibb
- Inventorship
- Inventors, Applicants, and Assignments – Judith S
- Patent Searching and Opinions
- Preparation and process for requesting preparation of design and utility patent drawings – Jonathan Shoolman
- Application Drafting for mechanical subject matter
- Application Drafting for electrical subject matter
- Application Drafting for biotech, pharma, and chemical subject matter – Suzannah K. Sundby
- Overview of Foreign Practices and How to Draft International Applications
- Provisional Applications – Michael Brown
- Overview of Design Patents – James Aquilina
- Non-publication requests – Steve Ackerman
- Filing Formalities – Lynn McMiller
- Counts – Brian Stanton
- Practitioner as co-inventor – Karen Oster
- Maintaining right of priority for Europe
- Petitions to make special
- Patent Prosecution Highway – Charles Roth
- Track I
- Pre-first-office-action interview program – Suzannah K. Sundby
- Claims drafting tips for mechanical subject matter – Fred Gibb
- Claims drafting tips for electrical subject matter
- Claims drafting tips for biotech, pharma, and chemical subject matter
- Responding to § 101 rejections
- Responding to § 112 rejections
- Responding to § 102 rejections
- Responding to § 103 rejections
- Restriction requirements in 111a cases
- Restriction requirements in 371 cases
- Double Patenting
- Continuations, CIPs, RCEs, divisionals, checklist for filing a continuation application – Melissa J. Pytel
- Interviewing Examiners – John K. Pike and Bob Hahl
- Inbound work from foreign agents – William Slate
- Duty of Candor and IDSs – Karen Oster
- Responding to Office Actions – mechanical subject matter – Claire Rutiser
- Responding to Office Actions – electrical subject matter – Claire Rutiser
- Responding to Office Actions – Biotech/Pharma/Chemical subject matter – Claire Rutiser
- Petitions to revive
- Options for next steps after a Final Rejection
- Petitions
- Reissue
- Reexamination
- Supplemental examination – Micah Gunn
- Inter partes review – Rick Neifeld
- Post-grant review – Rick Neifeld
- Covered Business Method proceedings – Rick Neifeld
- Ex Parte appeals
- Pre-appeal-brief conferences – Suzannah K. Sundby
- TYFNIL (Ten Years From Now In Litigation)
- Notice of Allowance and next steps – Michael Brown
- Paying the Issue Fee and next steps
- Docketing for US patent prosecution
- Patent term adjustment
- Calculating the patent term
- Certificates of Correction
- Maintenance Fees
- America Invents Act consequences
- PCT Filings and International Patent Prosecution – Carl Oppedahl
- Foreign Filing License issues
Frequently asked questions about this proposed book:
- Who is the potential audience for this book? The potential audience for this book is mostly the people who have just been admitted to practice before the USPTO. Probably it also includes people who were fairly recently admitted to practice. The book would be of interest to patent practitioners around the world because they would want to learn more about how things work in the US. I imagine that some inventors and corporations might buy the book as well, for any of a variety of reasons.
- Who will publish the book? The book would be published by Penaya Publishing, with an ISBN provided by Penaya. Printing will be done by a “printing-on-demand” system, probably Createspace or Lulu.
- What exactly is Penaya Publishing? Penaya is at present an imprint (publishing name) for Oppedahl Patent Law Firm LLC. Some day it might be spun off as a separate business entity controlled by Carl Oppedahl.
- What will the book cost? For ordinary retail purchase, it is suggested that the book be priced in a range of $15-25. The book would be available through Amazon and bookstores would be able to order and stock the book.
- What about copies for the authors? Authors will be able to purchase as many copies as they wish, at the printing cost. The printing cost is likely to be around $4 per copy. Authors who have purchased copies at the printing cost may give away or sell copies at any price they wish.
- What will be done with the profits from the book? It is intended that there will not be much in the way of profit. It is anticipated that the majority of copies of the book would be distributed by the authors themselves as they see fit. Such copies would not be yielding profits. As for sales by Penaya at an ordinary retail price, we would arrive at some way to distribute the profits. Probably the profits up to some initial total would go to OPLF to cover the work of assembling and printing and publishing the book. After the initial total had been covered, further profits if any would be distributed in some way in rough proportion to the authoring contributions.
- What’s in it for the authors? The main assumption here is that there would be little or no direct monetary reward for the authors. The book is intended to be priced at a very modest price, so as to encourage the largest possible distribution. If a copy of the book could be eventually found on the office bookshelf of many people in the US and in other countries, this would be ideal, and a cheap price furthers this goal. Many copies will reach such a bookshelf because one or another of the authors will have given away that copy of the book. The chief motivation for an author to contribute would be a goal of benefiting applicants and practitioners generally and perhaps gaining some recognition in the intellectual property community.
- How will the book be edited? The book will need to be edited for consistency of style and to provide cross-references among the chapters. Maybe Carl Oppedahl will do most of the editing.
- What style of writing is expected? It will be very important for the style of the main body of the book to avoid any overt self-promotion by the authors. There will be an “about the authors” section that can communicate the experience and qualifications of the authors. It is hoped that each chapter of the book will be very practitioner-oriented.
- How long is each chapter supposed to be? How much detail is expected from each co-author? The book is meant to be a primer, not a detailed encyclopedic work covering everything a practitioner would need to know. Each chapter will have a goal of “spotting the issues” but not exploring each topic and subtopic in complete detail. For each issue that gets spotted in a chapter, there would be a discussion of a few sentences or maybe a page.
- What is the timeline for the book? Many of the likely co-authors have already prepared slides on one or another of the topics listed above. Hopefully it would not take very long for these persons to adapt their slide materials into prose. It is hoped that all of the materials would be finalized by around April of 2018, permitting the book to hit print in about May of 2018.
- Who will own the rights? Each author will need to grant to Penaya a non-exclusive license to all rights to his or her contribution. Each author will need to give Penaya permission to use his or her name and likeness to promote the book. Each author will need to represent and warrant that his or her contribution does not infringe anybody else’s rights.
- How will the authors be selected? A goal will be to spread out the work among several firms and practitioners, so as to minimize the risk that the book would be perceived as promoting any particular firm, and so as to spread out the work so that the book can be completed sooner rather than later. The author list would hopefully be consensus driven to the extent possible, but with Carl making decisions if necessary to break ties or get past logjams.
- How will the collaboration be carried out? We would set up a collaborative workspace in Google Documents, so that each participant can see what is being done. Each participant would be able to look at the rest of the book as it develops.