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Jorge A. Goldstein, Ph.D., Authors Third Edition of U.S. Biotechnology Patent Law

Press Release
Sterne, Kessler, Goldstein & Fox

Washington D.C. (October 31, 2018) – Sterne, Kessler, Goldstein & Fox is pleased to announce the publication, by Thomson Reuters, of director Jorge A. Goldstein, Ph.D.,’s third edition of U.S. Biotechnology Patent Law, 2018-2019. This book is a highly readable and well-organized desktop companion for practicing attorneys, patent agents, novice prosecutors, litigators, and students seeking effortless entry into U.S. case law dealing with patents in modern biotechnology.

The focus of this book is on biotechnology cases decided by the Court of Appeals for the Federal Circuit, its predecessor, the Court of Customs and Patent Appeals, the U.S. Supreme Court, and the U.S. Patent & Trademark Office Appeal Boards.

Each important biotech case is prominently highlighted in the book and includes, in order:

  1. A summary and relevance of the holding;
  2. Separate patent claims (Since the holdings in patent law can only be understood in reference to the claims—Are they methods? Products? What are the exact words and limitations?—the author has separated the involved claims for immediate access.);
  3. Technology drawings or other facts needed for a clearer understanding; and
  4. Verbatim citations and quotes from the tribunal.
    Among the numerous revisions in this updated 2018-2019 edition are the following:

Chapter 3 Eligibility: Expanded discussion of natural compositions that have been purified as well as the addition of more non-precedential case decisions on Mayo Collaborative Services v. Prometheus Laboratories, Inc.

Chapter 5 Enablement: New Comments on the application of the Wands factors to chemical claims and enablement by reference to the state of the art and its limits, a new section on the use of after-arising evidence to prove or disprove generic enablement, and amended discussion of the time dependence of enablement of after- arising technology.

Chapter 6  Written Description: A new section on the written description of a specific embodiment or subgenus, a new comment on whether the “antibody exception” of Noelle v Ledermann is still a good law and several new or revised comments relating to after-arising embodiments.

Chapter 9 Novelty: New Comment on the interpretation of product-by-process claims for novelty purposes and additional case law discussion regarding The doctrines of inherent and accidental anticipation.

U.S. Biotechnology Patent Law, 2018-2019 is available for purchase from Thomson Reuters.

About the Author:
A pioneer in biotechnology patent law and founding partner of Sterne Kessler, Jorge A. Goldstein, Ph.D., has almost forty years’ experience in preparing, prosecuting, licensing, enforcing, and litigating biotech patents before the U.S. and foreign patent offices and tribunals. Dr. Goldstein is also the founder of the firm’s unique pro bono practice dedicated to integrating intellectual property law concepts with economic, social, and cultural rights to empower disenfranchised and impoverished communities’ economic and social development. Dr. Goldstein received his J.D. from The George Washington University with high honors, his Ph.D. in Chemistry from Harvard, and his B.S. in Chemistry from Rensselaer Polytechnic Institute.

About Sterne Kessler
Based in Washington, D.C. and renown for more than four decades for dedication to the protection, transfer, and enforcement of intellectual property rights, Sterne Kessler is one of the most highly regarded intellectual property specialty law firms in the world. Its team of attorneys, registered patent agents, students, and technical specialists include some of the country's most respected practitioners of IP law tackling innovations across a broad spectrum of industries. The firm’s practitioners hold nearly 50 masters and 50+ doctorate degrees in science or engineering and represent Fortune 500 companies, entrepreneurs, start-ups, inventors, venture capital firms, and universities in a client service driven environment that is welcoming, inclusive, and intellectually stimulating. Visit the firm online at sternekessler.com.

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