From October 2016 to March 2017 the team is joined by Guest Kats Rosie Burbidge and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Tian Lu and Hayleigh Bosher.

Wednesday, 25 November 2015

Some end-of-year reading ...

In case you were wondering what to do with your precious leisure time over the end-of-year period when things get a bit quiet, here are some recent intellectual property publications that might take your fancy ...

US Patent Law for European Patent Professionals, by Audrey Nemeth, is an extremely handy volume for those of us who, being based in Europe, are obliged to keep an eye on developments in the United States on a piecemeal basis but who do not have the luxury of the time to gain a proper appreciation of this complex, important patent culture -- a culture that is so alien and out-of-step in the eyes of those from that small insignificant domain called The Rest of the World.

This is what the publishers say about the book:
This is the first book that has been designed to make communication between European and US patent law professionals more comprehensible.

It explains exactly what is required at every stage of a patent proceeding in the United States, helping European patent professionals understand and act upon the facts. It ensures that both parties have a common understanding of basic US legal terms, and that you – a EU practitioner – will understand the available courses of action for the most common procedural scenarios.

United States patent law, like the European Patent Convention (EPC), is based on a hierarchical code of statutes, regulations and administrative guidelines. However, there are numerous important distinctions, which you’ll need to know if you are looking to successfully protect and leverage intellectual property in the United States.

This highly practical and detailed work is divided into five main parts, covering the basics of US patent law, prosecution of US applications, US patent and post grant proceedings, procedural elements, and advanced topics.
The author, who is Europe-based herself, does not merely describe the framework of the US system and its manner of operation; she leads readers towards the US from the elements of the European system which she can rely on as being familiar to readers, or at least resonating with them. That is not to say that this book is of no value to non-Europeans, since its clear, concise and undramatic description and explanations will benefit anyone who wants an overview of the US law -- especially in its post America Invents Act phase -- and who can set aside a relatively modest amount of time to sit down and read it.  The text is nearly devoid of footnotes, but references to the patent statute (35 USC) are more than adequate for anyone who wants to measure the author's text against the primary legal source.  By the way, it's not a formal comparative analysis of US and European law; that would require a far longer book, one which would not match the author's self-declared target.  Nor is it, or does it seek to be, an infringement litigation manual.

The chapters on “Responding to Office Actions” and “What Is a Final Rejection and How to Respond” are particularly handy, as are the bits that tackle procedural rules and practice and all that nerdy detail of how time limits are calculated, how you can file by fax and post and how to pay fees by credit card.

Bibliographic data: hardback, xxviii + 215 pages. ISBN 9789041160447. Rupture factor: low. Book's web page here

You can also read Audrey Nemeth's blogpost introducing this book on the Kluwer Patent Blog here.


IP and Other Things: a Collection of Essays and Speeches, by Katfriend and judge-turned-academic Sir Robin Jacob, is evidently not the author's last word on the subject since the book's web page describes it as the "First Edition". Considering the vast number of occasions on which this popular and approachable personality has essayed and speeched, it may be expected that there are many further editions to come.  It's a handsome volume but one which will inevitably disappoint any of its readers who have had the opportunity of listening to Sir Robin in person. This because the medium of print cannot capture the wit, the spontaneity, the force and the sense of being utterly and unchallengeably right which have characterised so many of Sir Robin's finest performances over the years. It is hardly the fault of either the author or the publisher, but the evidence is there for all to see.  With all this attractions, this well-produced volume just sits on the desk and waits for something to happen.  It doesn't argue; it doesn't fight; it doesn't let slip the occasional word that you might prefer your aged and saintly grandmother not to hear.  It doesn't do anything unless you turn the pages -- and to enjoy it at its best you have to read the purple passages as Robin would have delivered them in the first place: with power and with passion.

According to the publishers (Bloomsbury, who also publish Harry Potter):
The Rt Hon Professor Sir Robin Jacob has been variously a leading member of the Intellectual Property Bar, a High Court judge and, as Lord Justice Jacob, a judge in the Court of Appeal of England and Wales [but don't let this put you off, says Merpel]. His primary area of expertise is intellectual property (IP) rights. He chose to leave the Court of Appeal in March 2011 to take up his current position as the Sir Hugh Laddie Chair in intellectual property at University College London. He still sits occasionally in the Court of Appeal and is a door tenant at 8 New Square. These essays, selected from his published and unpublished writings and lectures, illustrate the breadth of his learning in IP and other matters. They are written in typically straightforward and entertaining style and, in the case of the older essays, a commentary of what has happened since they were first published. They will be of interest to any lawyer, law student or scholar interested in the development of IP law in the past quarter century.
Definitely worth taking a peep!

Bibliographic data: x and 523pp, hardback. ISBN 9781849465953. Price £65. Rupture factor: medium [though there might be occasional grounds for apoplexy ...] Book's web page here.


Owning the World of Ideas: Intellectual Property and Global Network Capitalism by Matthew David (Durham University, UK) and Debora Halbert (University of Hawaii at Manoa, USA) is, as one might imagine from the title, a book that is addressed at the more radical end of the market.  The book's web-blurb explains:
Formally, ownership of ideas is legally impossible, and can never be globally secured. Yet, in very real and significant ways these limits have been undone. In principle, ideas cannot be owned, yet, undoing the distinction between ideas and tangible manifestations, the distinction which underpins the principle, allows the principle to hold even whilst its meaning is hollowed out.

Post-Cold War global network capitalism is premised upon regulatory structures designed to enforce deregulation in global markets and production, but at the same time to enforce global regulation of property and intellectual property in particular. However, this roll-out has not been without resistance and limitations. Globalization, the affordances of digital networks, and contradiction within capitalism itself - between private property and free markets - promote and undo global IP expansion [if you, like this Kat, have not previously encountered the word "affordance", it means "a relation between an object or an environment and an organism that, through a collection of stimuli, affords the opportunity for that organism to perform an action. For example, a knob affords twisting, and perhaps pushing, while a cord affords pulling"].

In this book David and Halbert map the rise of global IP protectionism, debunk the key justifications given for IPRs [or at least make an effort to do so: not every reader of this weblog may agree], dismiss the arguments put forward for global extension and harmonization; and suggest that roll-back, suspension, and even simply the bi-passing of IP in practice offer better solutions for promoting innovation and meeting human needs.
This book is a must-read for anyone who thinks that there is a meeting of minds in the great debates over the justification and functional utility of intellectual property rights.  Read the text, look at the premises, run your eyes over the extensive bibliography and you will soon see that those who love IP rights and those who see them as a threat are arguing about a different IP and a different reality.

Bibliographic data: xv + 118 pp. Hardback. ISBN 9781473915763. Price £45. Rupture factor: minimal. Book's web page here. Oh, and if you're wondering, the book does have a copyright notice ...


MindWealth, by William A. Jones, is a book written by a true and dedicated IP enthusiast. Again, the title tells you as much about the writer as it does about his subject, since it bears the small-print subtitle "Building Personal Wealth from Intellectual Property Rights".
Intellectual property rights (IPR) are a force for good. People could harness their power more. The book describes the UK and global environment in which people can build personal wealth from IP. At its core is the statistic that approximately 70 per cent of a firm’s value is in its IP, which is generated by people. Changing the environment would help more people build personal wealth from IPR. That includes a better industrialization environment that delivers national competitive advantage through IPR. Author William Jones describes the ecosystem within which people generate and exploit IPR, using many examples, snapshots, and observations, as well as structured disciplines. The book takes a look at this ecosystem through the lens of the individual and IPR – and more specifically, the underpinning idea is that people can build their wealth by ensuring that IP works for them. It highlights factors that can influence an individual’s ability to be successful. It suggests new ideas to provide a better platform for building personal wealth. 
The book doesn’t fall neatly into any genre of, for example, investment, economics, law, or politics [you can say that again, says Merpel! It is a text with many strands: there's legal and commercial advice, war stories, personal reflections and the wisdom that can only be distilled from years of experience in the field]. Rather, it integrates or synthesizes a different position and new genre which exists above or to one side of these.
If you love, or merely like, IP, and if you want a comforting read that will reinforce most of your cherished opinions and beliefs rather than threaten them -- and if you want a tome that will last you right through the quiet end-of-year period, this book, published by AuthorHouse, could be the book for you.

Bibliographic data: xxxv + 576 pp. ISBN 978 1 5049 4120 4. Paperback. Rupture factor: considering that this is a paperback, not inconsiderable. Book's web page here.

5 comments: said...

It occurs to me that a book written by a European patent attorney and entitled EPC Law for patent professionals in the USA, one that is a quick and focused read, and cheap, might sell quite well in the USA and prove to be of huge benefit on both sides of the Atlantic. Does such a book exist I wonder.

THE US anon said...

I would buy that!

Anonymous said...

As far as I know, the 'reverse' book (i.e. a short reference on European law for US practitioners) does not yet exist. However, if someone decides to write it, Kluwer Law would likely be willing to publish it. I agree with maxthree and THE USanon that it would certainly be useful! If the EP practitioners took a few short hours to read the US book and vice versa, so much time explaining things to the correspondence attorneys on the other side of the pond could be saved.

MaxDrei said...

The book is needed, but who has the credentials to write it? A UK patent attorney (who is grounded in English common law) but one who is immersed in the mainland Romanic/German civil law mentality of the EPO, perhaps? Such a person would understand where the US readership is "coming from" and what aspects of civil law are alien to their thinking, and so need to be explained to them.

I agree, there is a promising market for such a book. But who amongst those qualified to write it has the time and the inclination to do a good job?

Michael Factor said...

I am not licensed in either jurisdiction, but generally consider myself familiar with both and usually draft ready to file responses for US associates.
I enjoyed the book and reviewed it at following link:

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