Welcome to the authorial website of Janice M. Mueller. Based in Lexington, Kentucky, Janice is the sole author of two patent law treatises, co-founder of the Chisum Patent Academy, a full-time academic teaching patent and intellectual property courses for 16 years, a former U.S. Justice Department patent litigator, and a law clerk (1990-92) to Judge Giles S. Rich of the U.S. Court of Appeals for the Federal Circuit. Janice’s published writings and commentary focus on the patent law decisions of the Federal Circuit, which holds exclusive appellate jurisdiction for U.S. patent cases and proceedings, and the U.S. Supreme Court.
Mueller on Patent Law is a comprehensive yet accessible two-volume legal treatise for patent practitioners, available as of 2021 in hard copy from Full Court Press or in digital form on the Fastcase legal research database. This well-organized resource provides concise and timely access to U.S. patent law in the twenty-first century, focusing on game-changing Federal Circuit and Supreme Court decisions.
No longer an obscure specialty, patent law protects intellectual assets of tremendous economic value in the global economy. For better or worse, patent practitioners now confront a tsunami of information and advice offered by websites, blogs, specialty journals, and even smartphone apps. Mueller on Patent Law provides a clearly structured filter through which to absorb the content flood. Rather than a historical encyclopedia, this treatise is a carefully curated guide to understanding the current state of patent law and how it has developed during the Federal Circuit’s tenure.
Volume I of Mueller on Patent Law focuses on the requirements for patentability, both pre- and post-America Invents Act of 2011 (AIA), as well as patent prosecution procedures. Volume II covers patent enforcement and validity challenges, including AIA-implemented post-issuance USPTO review. Both volumes emphasize the criticality of patent claim drafting and interpretation.
Volume I of Mueller on Patent Law covers patentability and validity. It offers a clear-cut approach to understanding the multiple, rigorous requirements for obtaining a U.S. patent. Following introductory chapters overviewing the patent system and the central importance of patent claims, Volume I explicates the cornerstone requirement of novelty and what counts as prior art under both pre- and post-AIA regimes. Volume I also tackles the amorphous landscape of patent eligibility, as well as the bedrock requirements that a patentable invention be useful and not only new but nonobvious. Separate chapters unpack the patent application disclosure requirements of enablement, written description, and best mode. Volume I concludes with chapters analyzing inventorship, the prohibition on double patenting, and the nuts and bolts of prosecuting patents in the USPTO.
Volume II of Mueller on Patent Law analyzes how patents are enforced in the United States and their validity challenged. The volume details patent litigation in the federal courts as well as the America Invents Act (AIA)-implemented proceedings for challenging patentability (IPR, PGR, and CBM). Claim interpretation, jurisdiction and procedure including recent sweeping changes to patent venue, direct and indirect liability (including inducing, contributory, and divided infringement), territoriality concerns, literal and doctrine of equivalents (DOE) infringement, prosecution history estoppel and other legal limitations on DOE liability, declaratory judgment actions, Hatch-Waxman Act pharmaceutical litigation, antitrust issues, remedies, and defenses including inequitable conduct, exhaustion, patent misuse, laches, and equitable estoppel all receive thorough and timely treatment. Because patent protection is frequently global, Volume II explores multi-national procurement and enforcement. Reexamination and reissue in the USPTO are detailed, as is the increasingly important subspecialty of design patent law.
Patent Law delivers a succinct, single-volume explanation of the principal legal doctrines, key judicial authority, governing statutes, and guiding policy considerations in obtaining and enforcing a U.S. patent.
This is the best of the hornbooks on the basics of the patent law. I am both a partner in a law firm who specializes in patent litigation, and an adjunct professor of law. I have been practicing in the field for almost 20 years, and I still find myself going back to this book for easy-to-find, clear and concise answers to patent law questions.
Click here to watch Janice’s March 18, 2021 webinar with Fastcase: “A Conversation with Janice Mueller, Author of Mueller on Patent Law.”
Full Court Press, an imprint of Fastcase, Inc., is the new publisher for the two-volume practitioner treatise, Mueller on Patent Law. Ordering information for hard copy and digital access is available below.
NB: Not every Board decision must be reviewed by the Director. But all of them must be subject to his review. What criteria to decide which decisions get the extra scrutiny? twitter.com/patent_maven/s…
Breyer=5th vote on remedy: "Under the Court’s new test, the current statutory scheme is defective only because the APJ’s decisions are not reviewable by the Director alone. The Court’s remedy addresses that specific problem, and for that reason I agree with its remedial holding." https://t.co/9sFoy1azaN— Janice Mueller (@patent_maven) June 21, 2021
Breyer=5th vote on remedy: "Under the Court’s new test, the current statutory scheme is defective only because the APJ’s decisions are not reviewable by the Director alone. The Court’s remedy addresses that specific problem, and for that reason I agree with its remedial holding." twitter.com/patent_maven/s…
US v Arthrex 6/21 #SCOTUS: 5-4 vote that APJs have unreviewable executive power, incompatible with their inferior officer status. But 4-4 on remedy; 4 say APJ decisions must be subject to review by Director; APJ appointment is not the Constitutional problem, it's lack of review. https://t.co/XbfWt6zxIt— Janice Mueller (@patent_maven) June 21, 2021
US v Arthrex 6/21 #SCOTUS: 5-4 vote that APJs have unreviewable executive power, incompatible with their inferior officer status. But 4-4 on remedy; 4 say APJ decisions must be subject to review by Director; APJ appointment is not the Constitutional problem, it's lack of review. twitter.com/patent_maven/s…
Chandler v PhoenixSvcs 6/10 #FedCir dismisses appeal of NDTex antitrust judgmt for lack of app jurisdiction & transfers to CTA5. C's claim (WP fraud by enforcing patent earlier held unenforceable) does not depend on resolving substantial q of patent law. Xitronix (2018) controls.
“Code Breaker” is an excellent read. The author makes the science accessible (& does a decent job on the patent aspects), but he really shines in telling the stories of the people involved—colleagues and competitors. Their interactions are not always pretty, but quite fascinating pic.twitter.com/dWhkM0iJqe— Janice Mueller (@patent_maven) May 9, 2021
SpeedTrack v Amazon 6/3 #FedCir affirms NDCal: no infringement of ST patent (filed 1995) for accessing computer files. Clear & unmistakable prosecution disclaimer (via argument & amendment); claims do NOT cover predefined hierarchical field-and value relationships (which A uses).
Hyatt v Hirshfeld 6/1 #FedCir answers q 1st impression: prosecution laches IS available as PTO defense in s145 action. DCt erred in holding PTO failed to prove pros laches by Hyatt, who filed in 1995 these 4 GATT Bubble apps (each ~400 claims). "Unreasonable & unexplained delay."
BectonDickinson v Baxter 5/28/21 #FedCir correctly rejects Baxter's creative argument that a prior art reference patent cannot be s102(e)(2) art if the ref patent was cancelled in IPR. Statute says s102(e)(2) patent must be granted but does not require that it be currently valid.