Pharmaceutical, Biotechnology, and Chemical Inventions: a book review

A while back, PatLit posted a notice to the effect that Pharmaceutical, Biotechnology, and Chemical Inventions, edited by Duncan Bucknell, had been published by Oxford University Press -- but it wasn't really a review. That omission has now been made good by Darren Smyth (EIP), who has kindly given this work a rather closer, practitioner-oriented inspection.  This is what Darren has to say:

"This is a most useful and welcome book that is crammed with the sort of comparative information that the internationally-minded patent practitioner (and client thereof) often seeks.

When presented with this – well – it can only be described as a magnum opus in both senses and with an emphasis on the magnum, my first thought was to paraphrase Dorothy Parker “four two volumes, neatly boxed bound, suitable for throwing purposes”. The rupture factor is huge – the pages of a novella at least (comprising the contents, and tables of cases and legislation) before we get to the page which mendaciously purports to be “1”. Then each of the two volumes has around 1,100 pages of real content before wearily giving way to the indices.

Yet the appearance is doubly deceptive. First, each chapter (of which there are 100) is of a perfectly accessible length, not off-putting at all. And secondly, the tomes turn out to be very little restricted to the fields of the title, and are actually a review of patent and related law in general. Much of it (bearing titles of such topics – hardly specialist - of “novelty”, “inventive step”, “technology transfer arrangements”) would be of interest to, and completely accessible to, practitioners in any field of technology.

Naturally, there are chapters which are more specifically focused on the stated field – chapters on drafting bioscience patents and pharmaceutical patents respectively; on patent term extensions and supplementary protection certificates; and extensive sections on regulatory approval and data exclusivity.

The approach taken in this work is that the 15 sections (including: obtaining patent rights, the period of monopoly, patent validity, amendment, invalidity proceedings and strategy, infringement, defences to infringement, patent litigation strategies, regulatory approval, data exclusivity, competition law, and other IP rights) are each divided into chapters. For example, the infringement section has chapters called Infringing Acts and “Literal Infringement”, Infringement by Equivalents/Non-Literal Infringement, Indirect Infringement, Infringement Proceedings, Remedies for Patent Infringement, and Restrictions on Remedies. Each chapter then consists of an essay on that topic for each jurisdiction of Australia, Canada, China, India, Japan, United States, Europe (overview), France, Germany, Italy, Netherlands and the United Kingdom. Each national essay is written by a contributor from that country, and the individual voices of the different authors are clearly maintained. The essays on the same topic in respect of different countries adopt a different internal structure (presumably originating from the contributor). While this is inevitable in view of the way the work was created, it does mean that a piece of information which is supplied in respect of one jurisdiction is not necessarily supplied in respect of another, and, even if supplied, is not always easy to locate. The list of contributors is lengthy and impressive, and the mere creation and assembly of this work is of itself a monumental exercise. Duncan Bucknell is therefore credited as “Editor” rather than “Author”.

Surprisingly given the OUP pedigree, the book is not completely free from typographical errors. However, this is a minor quibble. A more significant quibble is that the writing style of some of the authors can sometimes be difficult to follow, and the sections written by non-native English speakers could often have benefitted from greater editorial intervention.

Books of this type, compiling comparative expositions of the law from multiple jurisdictions, are familiar in loose-leaf format, and it is perhaps surprising that a non-updatable conventionally hardbound presentation has been chosen. It goes without saying that some of the content of the work is already out of date.

I do not expect that the editors or contributors expected that anyone would sit down (or for that matter adopt any posture) and read the whole work cover to cover. This is a work to dip in and out of, and to consult. For the purposes of consultation, however, the index is not as extensive as would be helpful – it is suspiciously short for a reference work of this length, and key terms (such as “diagnosis”) are missing. Some parts of the book have been a joy to read and were clearly set out. Some parts were rather clunky (for example the treatment of the exclusion from patentability under Art 53(c) EPC in Europe Overview on page 514 ff, which was also unduly influenced by the pre-EPC 2000 formulation of this exclusion as relating to industrial applicability. It was also surprising that this section did not reference the seminal decision G1/04 in the discussion of diagnostic methods, referring to it instead in the Netherlands section).

Overall, this is an impressive book with an expansive coverage which is jolly handy to have around, but could have done with more work on the detail".

Further details of this massive work can be found on its web page here.