Monday, 22 August 2011

Some summer reading

U.S. Patent Prosecutor's Desk Reference is a recent Oxford University Press publication, authored by Joshua P. Graham and Thomas G. Marlow. It's remarkable that the pair have found time to put this work together, given their day-jobs. Joshua P. Graham is Patent Counsel for Research In Motion, where he is a patent prosecutor and portfolio manager for the Advanced Technology group, and Thomas G. Marlow is Intellectual Property Counsel for Fairchild Semiconductor, where he manages product line and business unit patent strategy, enforcement, and procurement. Both have previous experience in private practice.

What can the reader expect to find in this book? The publishers explain:
"Patent prosecution is more than drafting patents -- it is also advocating positions. The challenge that each patent prosecutor be an effective draftsman and advocate is compounded by mounting pressure to procure high quality patents at minimum cost. There is a need for a quick reliable reference to assist prosecutors in creating, researching, and supporting patentability arguments.

In the U.S. Patent Prosecutor's Desk Reference, Joshua P. Graham and Thomas G. Marlow assist patent prosecutors in responding to Office Actions issued by the United States Patent and Trademark Office (USPTO) rejecting patent application claims. It provides a comprehensive and updated source of law, organized by sections corresponding to the types of rejections made by the USPTO. Each section of this reference work includes the basis for the rejection, responses to the rejection, and legal authority supporting the responses.

This desk reference cites five different authority sources: statutes that govern the granting of patents; the Manual of Patent Examining Procedure, Eighth Edition which dictates how examiners determine whether a patent application should be allowed; decisions by the Board of Patent Appeals and Interferences which is the administrative body of the U.S. Patent and Trademark Office that reviews decisions made by the examiners; the U.S. Court of Customs and Patent Appeals which was the body that reviewed decisions made by the Board of Patent Appeals and Interferences until the Federal Circuit came into existence in 1982; the U.S. Court of Appeals for the Federal Circuit which is now the body that reviews decisions made by the Board of Patent Appeals and Interferences. The U.S. Patent Prosecutor's Desk Reference provides a comprehensive and reliable guide for prosecutors who create, research, and support patentability arguments ...".
A cynic might take the view that the successful navigation of Office Actions is just a prelude to having one's careful handiwork at the prosecution stage unpicked by subsequent validity challenges before the courts, but without a patent in the first place one doesn't have the option of deciding whether to sue a third party or defend an invalidity claim. Anyway, this work lurks somewhere between a desk reference work and a narrative book: the format and structure are those of the former, but many of the items referenced in it are, if not totally un-put-downable, agreeably accessible and sometimes compelling to read.

Bibliographic data. Paperback, viii + 411 pages (the web page says 388), ISBN 978-0-19-974062-8.
UK price: £135. Web page here.

International Patent Law: Cooperation, Harmonization and an Institutional Analysis of WIPO and the WTO, by Alexander Stack (Gilbert’s LLP) is the sort of book that always cheers this blogger up: a small book on a big topic. Anything with the initials "WTO" on the front cover is likely to be pretty beefy, as other books published from the same stable have amply demonstrated in recent years. But this book has bitten off a manageable chunk. It's not quite 'boy meets girl', but 'WTO meets WIPO' has a romance all of its own, and this little book helps the reader to understand the curious dance between the often politically sensitive but economically clumsy WIPO with the economically driven WTO.  Above all, it is not an easy read. The author's depth of familiarity with a number of disciplines and the depth of his analysis of institutional behaviour make the text slow-going for those who are less well informed

According to the web blurb:
"When is international patent law cooperation and harmonization welfare-enhancing? [The moment this question is asked, the secret is out: this is not a how-to-do-it book for anyone wanting to file for international patent protection ...] What is the role of international institutions – WIPO and the WTO – in furthering such harmonization? This book explores these questions from a global welfarist, rationalist perspective. It grounds its analysis in innovation theory and a examination of patent law and prosecution, incorporating the uncertainty of patent law’s impact on welfare at a detailed level, dynamic changes, the skewed nature of patent value and the difficulty of textually capturing patent concepts. Using tools from new institutional economics, it explores future design implications for international institutions, analyzing grounds for international cooperation as collective action problems and applying historical, political and transaction cost analyses [Arguably this is the book's strongest selling point].

Academics, students and practitioners interested in international economic law, specifically in respect of patents, innovation and intellectual property, the TRIPs Agreement, the WTO and WIPO will find this book essential [reviewer's note: academic and students, yes, certainly-- but I'm not sure what sort of practitioner would find this book 'essential', and I'm not sure I've met one yet who would think it was]. It will also prove insightful for researchers whose primary background is in international relations or international political economy, but are seeking an introduction to the patent and intellectual property field [reviewer's note: this book does not serve as an introduction to patent law or to intellectual property law, but appears to assume that the reader is familiar with the field] ".
Bibliographic data. Published by Edward Elgar Publishing, 2011. Hardback, x + 208 pages. ISBN 978 1 84980 258 1. Price £6 (you can buy it online from the publisher for £58.50).  Web page here.

European Patent Law: Towards a Uniform Interpretation, by Stefan Luginbuehl (a lawyer with the European Patent Office, Germany), is another recent offering from Anglo-American publishing house Edward Elgar Publishing.
"In his detailed study, Stefan Luginbuehl critically examines the latest efforts to establish a common European and EU patent litigation system and suggests possible alternatives to such a system.

Due to the lack of a European patent court, both the EPO and national judges interpret European patents and European patent law. This results in diverging interpretation across Europe and costly litigation for patent holders. Stefan Luginbuehl’s proposals to promote the goal of a uniform interpretation of patent law and ease the difficulties are timely and highly insightful.

Dealing with important legal and political issues related to European patent litigation and the establishment of a common patent litigation system, this book will appeal to practitioners, patent litigators, patent attorneys and judges specialised in patent litigation. Academics teaching and learning IP (patent law), private international law, or international civil procedure, will find this study interesting as the book deals with important aspects of national and international patent litigation, as well as procedural and structural questions related to the establishment of a patent court for Europe".
This is a serious analysis of the legal issues, current to November 2010. The author has drawn on a vast array of sources, reflecting a variety of legal cultures and stakeholder perceptions. Above all, it pays attention to the issues involved in creating closer cooperation within Europe from the standpoint of an insider who is as much concerned with the reality of life within Europe's patent systems as with matters of grand principle.  This reviewer looks forward to the second edition ...

Bibliographic data.Published 2011. xxiii + 333 pages.Hardback. ISBN 978 1 84980 105 8. Price £79.95 (£71.96 from the publisher's website). Book's web page here.

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