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Bloomberg BNA Announces the Publication of the Third Edition of "Electronic and Software Patents: Law and Practice"
Jan 20, 2012 (12:01 PM EST)

ARLINGTON, Va., Jan. 20, 2012 /PRNewswire-USNewswire/ -- Bloomberg BNA today announces the publication of the Third Edition of Electronic and Software Patents: Law and Practice, offering updated guidance on technological developments, changes in USPTO policy, and pivotal court rulings. The book is published in cooperation with the American Intellectual Property Law Association.


Electronic and Software Patents: Law and Practice, Third Edition is designed to help practitioners draft, prosecute, and manage a strong portfolio of electronic and technology patents. In this step-by-step strategy guide, 29 experts—handpicked for their experience with this challenging specialty—provide perspectives and tactics, including:

  • Guidance on tough decisions such as whether to seek patent protection at all, how to search for and evaluate prior art, how to use trade secret and copyright law in conjunction with patent strategy, and how to draft claims for broad yet distinct interpretation
  • Succinct, useful lessons on preparing computer-related patent applications under Alappat, its progeny, and the USPTO's examination guidelines
  • Compelling insights on drafting with the appropriate scope—and the unique, software-related aspects of the best-mode, enablement, and written-description requirements of Section 112
  • Candid practice "tips and traps" for each step of the patent prosecution process
  • International survey of the statutes, regulations, and case law of more than 40 nations—plus basic global principles of patentability
  • Eight representative sample patents, a timesaving practice checklist, a case table, and an exhaustive topic index

The new Third Edition also includes:

  • Guidance for writing specifications in view of Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co.  
  • Analysis of the Federal Circuit's application of the Supreme Court's decision in Bilski to Research Corporation Technologies, Inc. v. Microsoft Corporation.
  • Insights for drafting claims in view of Cybersource Corp. v. Retail Decisions, Inc.  
  • Tips for writing preambles that do not limit when the claim is interpreted
  • Pointers for creating the best possible patent application

Ways to expedite the patent examination process also are provided, as are suggestions for maximizing success with the USPTO using (1) pre-first action interview, (2) first action interview program, and (3) pre-approval brief review request. The treatise also gives strategies for accelerating the issuance of a patent via the Patent Prosecution Highway and contains a comprehensive list of databases for searching patents, including U.S. and foreign government databases, commercial patent databases, non-patent literature databases, and internet search engines. 

The American Intellectual Property Law Association (AIPLA) is a national bar association constituted primarily of lawyers in private and corporate practice, in government service, and in the academic community. AIPLA represents a wide and diverse spectrum of individuals, companies and institutions involved directly or indirectly in the practice of patent, trademark, copyright, trade secret, and unfair competition law, as well as other fields of law affecting intellectual property. Its members represent both owners and users of intellectual property.​​​​​

The Editors-in-Chief of Electronic and Software Patents: Law and Practice, Third Edition are Steven W. Lundberg, a shareholder in Schwegman, Lundberg & Woessner, P.A., Minneapolis, MN; Stephen C. Durant, a shareholder in Schwegman, Lundberg & Woessner, P.A., San Jose, CA; and Ann M. McCrackin, a professor of intellectual property law at the University of New Hampshire School of Law in Concord, NH and a shareholder in Schwegman, Lundberg & Woessner, P.A., Minneapolis, MN.

Bloomberg BNA, a wholly owned subsidiary of Bloomberg, is a leading source of legal, regulatory, and business information for professionals. In addition to Electronic and Software Patents: Law and Practice, Bloomberg BNA publishes: Intellectual Property Law in Cyberspace; Intellectual Property, Software, and Information Licensing; Intellectual Property Taxation: Transaction and Litigation Issues; and other titles in intellectual property law. For a free publication catalog, call 1.800.960.1220, send an e-mail request to, or visit us online at

Electronic and Software Patents: Law and Practice, Third Edition (Order #1975-PR11/$485.00 plus tax, shipping, and handling) may be purchased from Bloomberg BNA, PO Box 7814, Edison, NJ 08818-7814. Telephone orders: 1.800.960.1220. Fax orders: 1.732.346.1624. A 10% discount is available on print copies of books when ordering from the website at Please note that discounts cannot be combined.

Editors: Review copy available upon request.
Please e-mail Matt Greene at, or call 703.341.5767.