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New Second Edition of Biotechnology and the Federal Circuit Examines the Court's Decisions on Chemical, Biotechnology, and Pharmaceutical Patent Law Cases

ARLINGTON, Va., Jan. 3, 2011 /PRNewswire-USNewswire/ -- BNA Books, a division of BNA, announces the publication of the Second Edition of Biotechnology and the Federal Circuit, the only reference work that provides an in-depth consideration of the entire body of Federal Circuit precedent in the rapidly developing area of biotechnology.


Biotechnology and the Federal Circuit, Second Edition integrates the court's decisions in chemical, biotechnology, and pharmaceutical cases with an analysis of the current law. Unique in its detailed discussion of precedent and critical analysis of jurisprudence, patent prosecutors, litigators, and in-house counsel alike can count on this treatise for the guidance to navigate through the labyrinth of Federal Circuit biotechnology patent law.

The Second Edition offers full analysis and incisive, expert commentary on recent en banc Federal Circuit and Supreme Court decisions which have rewritten the law applied to biotechnology inventions and altered the basic legal principles governing patentability and infringement. This edition also includes extensive revisions and updates to the original volume and the supplements, and encompasses the most recent Federal Circuit precedent, including comprehensive analysis and discussion of:

  • KSR v. Teleflex, the Federal Circuit's biotechnology and pharmaceutical decision applying the Supreme Court's analysis of obviousness and motivation to combine prior art teachings, including the revived "obvious to try" standard
  • Abbott v. Sandoz, the Federal Circuit's fundamental product-by-process decision and its implications for patentability and infringement of biotechnology process patents
  • In re Bilski, and its implications for patentability of biotechnology inventions involving quantitative analysis and processes involving the application of algorithms, including the Federal Circuit's decision in Prometheus v. Mayo
  • Written description and the evolution of the requirement leading to the court's en banc decision in Ariad v. Eli Lilly (including its application in In re Wallach), Capon v. Eshhar, University of Rochester v. Searle, Invitrogen v. Clontech, Carnegie Mellon v. Hoffman-La Roche, and In re Alonso, as well as the revised 2008 USPTO Guidelines and training materials
  • Utility and the court's "practical utility" standard for patentability, including its decisions in In re Fischer, Rasmusson v. SKB, and In re '318 Patent Litigation

Biotechnology and the Federal Circuit, Second Edition also contains invaluable research aids, including the most thorough subject-matter index available, a completely revised table of cases, and a table of statutes and regulations cited. All text and footnote references have been updated to include extensive cross-references to recent Federal Circuit cases.

The author, Kenneth J. Burchfiel, is a partner in Sughrue Mion, PLLC, Washington, DC. He specializes in the chemical arts and was the first American patent lawyer admitted to practice in Japan under the reciprocal foreign law practice statute. Mr. Burchfiel's practice includes litigation before the federal courts, interferences, and appeals.

BNA is a leading private publisher of news and information products for professionals in law and business. In addition to Biotechnology and the Federal Circuit, Second Edition, BNA's Book Division publishes Anatomy of a Patent Case; Constructing and Deconstructing Patents; Drafting Patent License Agreements; Electronic and Software Patents: Law and Practice; Intellectual Property Taxation: Transaction and Litigation Issues; International Patent Litigation: A Country-by-Country Analysis; Patent Infringement Remedies; Patent Law and Practice; Patent Prosecution: Law, Practice, and Procedure; Patent, Trademark, and Copyright Laws; Patent, Trademark, and Copyright Regulations; Patents and the Federal Circuit; Pharmaceutical Patent Law; Trademark Litigation Practice; Harmon on Patents: Black-Letter Law and Commentary; and other titles in legal specialties. The BNA Books website, including an online catalog, can be found at

The new Second Edition of Biotechnology and the Federal Circuit may be purchased (1,164 pp. Hardcover/Order #1738-PREL10/$395.00 plus tax, shipping, and handling) from BNA Books, PO Box 7814, Edison, NJ 08818-7814. Telephone orders: 1-800-960-1220. Fax orders: 1-732-346-1624. For a free BNA Books catalog, call 1-800-960-1220 or send an e-mail request to A 10% discount is available on print copies of books when ordered from the website at (Please note that discounts cannot be combined).

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