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Sunday, 15 August 2010

Two titles on patents

Patents are the theme of this little note on recent publications, with a sub-theme of "something old, something new".


The "something old" is the second edition of The Modern Law of Patents, some five years after the emergence of the first edition. In much the same way as major football teams now have large squads of talented performers, so too do many leading intellectual property texts carry the imprint of large squads of expert authors. The MLP team, under the benign eye of recently-retired and much loved Patents County Court judge Michael Fysh (consultant editor of this volume), is led by the three-pronged attack of Ashley Roughton (Hogarth Chambers), Phillip Johnson (barrister, author, lecturer and JIPLP review editor) and Trevor Cook (Partner, Bird & Bird and definitely one of its Wisest Old Owls). Contributors are Mark Anderson and Victor Warner (Anderson & Co), Richard Davis (Hogarth Chambers), Professor Johanna Gibson, Queen Mary College, London, and now Director of the Intellectual Property Institute), Ian Karet (Linklaters) and Michael Spence (Vice Chancellor, University of Sydney).

What do the book's publishers say about it? After the usual praise they mention that the new edition includes:
"Conception, initial protection, prosecution, expression, validity, transmission, exploitation and infringement;
Laws of patents in other jurisdictions in order to provide guidance as to the laws of those countries in relation to the broad questions of prosecution, validity, competition and infringement;
Detailed coverage of the laws of patents as they relate to computers, pharmaceuticals, Biotechnological inventions and aspects of the laws of competition, criminal and boarder controls and inventive products and inventive processes as patented inventions;
Guidance in relation to the law of patents from a prosecution and procedural aspect as well as auxiliary aspects (such as human rights and dispositions arising by mere operation of law);
Materials in paper which provide the statutory and practical basis for the existence and subsistence of patents in the United Kingdom and in relation to prosecution of patent applications in the European Patent Office".
The authorship of the individual chapters is not indicated, so the reader is entitled to assume either that everyone had a hand in each or that the doctrine of collective responsibility applies. The Preface, subscribed by the three General Editors, makes special mention of the contribution of Phillip Johnson, whose assertive touch and confident pen is much in evidence in this largely rewritten work.

The IPKat would like to pick out several features of the second edition that make it so useful. Principal among these is the painstaking insertion, at various points along the way, of European Patent Office practice. This explains some arcane and almost deliberately dull decisions in a manner which makes them accessible and relevant as well as surprisingly interesting, and gives the book a utility (and a readership?) which is far from parochial. The Kat also liked the lively chapter on ownership and transactions, which anyone thinking of licensing a patent and its related technology should read before leaping into a licence agreement (anyone for 'best endeavours'?). And -- dare he say it? -- this Kat learned a great deal from the chapter on the arbitration of patent disputes, this being something he has not come across since the 1980s in any meaningful form and he rather assumed that it was alive only on the other side of the Atlantic.

On the downside (and this pedantic review is saying nothing about the typos), MLP is a bit like Jorges Luis Borges' Book of Sand: it is almost impossible to find any page. This is because the paper is so thin and flimsy that it's almost impossible to turn over a single page at a time. If your solution, like mine, is to dampen a digit in order to get the page to stick to it, the page remains damaged forever. But since you'll never find that page again, it isn't a problem ...

The problem could have been solved by jettisoning much of the non-authored content which is freely available on the internet and which many readers and purchasers will already have several copies of (the analysis stops at page 1,075; thereafter there are over 900 pages of precedents, pleadings, materials and indices). Having jettisoned this cargo, the publishers could then revert to the sort of paper that is not normally associated with spring rolls.

Bibliographic details: Hardback, ccxxxvi + 1,921 pages. ISBN: 9781405745185. Price £300. Web page here. Rupture factor: quite substantial.


Patents (edited by Joseph Scott Miller, Associate Professor, Lewis & Clark Law School, US) is a very different book. This is the first volume in the publishers' Critical Concepts in Intellectual Property Law series. The editor is obviously fond of the light bulb as a metaphor for innovation, but the IPKat is prepared to forgive him this lapse into the imagery of the IP cliche for the sake of the well-chosen selection of patent articles old-and-new. If it's a long time since you've read Don Chisum's piece on the patenting of algorithms (1986), or if you've never read it at all, this is what you do: take a day off, drive out to a place of outstanding natural beauty, read the piece over a couple of chilled beers (or whatever is your pleasure) and then just think ...

According to the publishers' web-blurb:
"Contemporary patent law continues to struggle with the most basic questions of patent system design. There is fierce debate over the power of the Patent Office, the role of the courts, incentives to guide the process and many other fundamental issues. Professor Miller brings together seminal articles which are acknowledged to be the proper foundations for these ongoing debates. This indispensable collection of papers is vital for patent policy makers and serves as an excellent reference source for anyone with an interest in the topic".
It should really have added something to the effect that so much of the seminal thinking, gathering of research data, formulation of economic theory and prescriptive writing over the past quarter of a century has emanated from the United States that one might believe that it was the source of all universal truths concerning the patent system as well as the natural venue for all the debate to which the book's blurb refers. This book greatly reflects US law and scholarship, but it may be debated whether the contributors' conclusions shine much light beyond that great country's borders.

Bibliographic details. Hardback ISBN 978 1 84844 217 7. xii + 643 pages. £190 (with publisher's online discount, £171).Web page here. Rupture factor: considerable.

1 comment:

Anonymous said...

Not sure how the comment "If it's a long time since you've read Don Chisum's piece on the patenting of algorithms (1986), or if you've never read it at all, this is what you do: take a day off, drive out to a place of outstanding natural beauty, read the piece over a couple of chilled beers (or whatever is your pleasure) and then just think ..." relates to the new book, but there must be a response to the Chisum dismantling of Benson that addresses what appear to be death blows to many of the basic positions advnaced by those that deem "software patents" to be improper. - Any suggested reading of equal scholarly ranking to provide a balance viewpoint?

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