More recent books reviewed

Always an enthusiast for IP as it is affected by real trade issues, the IPKat was unashamedly excited at the prospect of getting his paws on the TRIPS Regime of Antitrust and Undisclosed Information, by the eminent scholar and gentleman Nuno Pires de Carvalho.

What the publisher's blurb says:

"In this brilliantly conceived and authoritative work the eminent intellectual property specialist Nuno Pires de Carvalho focuses on the mechanisms, obligations, and opportunities of trade secret protection under the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs). With the powerful knowledge base derived from his long experience both at the World Trade Organization (WTO) and the World Intellectual Property Organization (WIPO), he illuminates the crucial relationship of antitrust and industrial property, clearly demonstrating – in contrast to much “received wisdom” – the intrinsic pro-competitive nature of intellectual property and of industrial property in particular. Using an extraordinary wealth of practical detail, and offering hundreds of pointed hypothetical and actual examples, Pires de Carvalho dispels the murkiness around such essential concepts and provisions as the following:

* the inevitable interdependence of industrial property and antitrust law;
* abuses of patent rights and the vexed issue of patents and monopolies;
* the legal implications of international exhaustion under Article 6;
* the meaning of “balance of rights and obligations” under Article 7;
* divestiture and the fruits doctrine under Article 32;
* international cooperation in identifying antitrust violations in licensing agreements;
* protection of confidential information in court proceedings;
* protection of undisclosed test data against unfair commercial use under Article 39.3;
* the WTO Dispute Settlement Mechanism in the context of undisclosed information.

... It combines an easy-to-follow article-by-article commentary on the TRIPs Agreement with a theoretical scholarly analysis that makes of it an invaluable resource to all those who wish to understand industrial property rights at a deeper level. Lawyers, judges, scholars and government officials will find an abundance of information and legal analysis here that will help them identify antitrust issues and solutions to problems of trade secrets posed by the implementation of the TRIPs Agreement".

The IPKat, being a believer in the interdependence of industrial property and antitrust law, needed little convincing about the central core of the author's thesis. Nor did he need reminding that international exhaustion of IP rights is not the end of the world for IP owners, who are perfectly capable of achieving measures of protection even when they cannot prevent their own lawfully-made products coming back home to roost. Accordingly he was naturally sympathetic to this book -- which goes way beyond the narrow themes suggested by "undisclosed information" alone. He is also impressed at the trouble that the author has taken in looking over the parapet of international IP law and fixing his analytical gaze on real provisions of national law and indeed literature.

The arrangement of this book is also clever, promoting the analysis of Article 40 (Control of Anticompetitive practices in contractual licences) ahead of the main course, as it were, of Article 39 (protection of undisclosed information itself) since the contract is the most effective means of (i) disclosing undisclosed information while still keeping control of it or (ii) restricting the ability of another to compete -- depending on your bias. The IPKat hopes that, when the next edition of this book is published, the author won't feel obliged to be quite so polite and objective, though, and that he will allow himself the luxury of a little rant about the need to persuade people that TRIPs and the Paris Convention actually exist on the same planet and that you don't have to choose one in preference over the other if you can make them pull together.

Bibliographic data: Publisher: Kluwer Law International, 2008. ISBNs 9041126430 and 13 9789041126436. Hardcover, xiv + 404 pages. Price £89. Rupture factor: moderate. Book's web page here.


For those who believe that economics is not a heavy subject, the two volumes of Economics Of Intellectual Property Law, edited by Robert P. Merges is the perfect myth-buster. Professor Merges (Wilson Sonsini Goodrich & Rosati Professor of Law and Technology and Co-Director, Berkeley Center for Law and Technology, University of California, Berkeley, US) has put together a thumpingly heavy compendium of must-read materials for those whose allegiance to IP is biased towards the marketplace rather than towards the human creativity model more favoured by the civil law tradition.

What the publisher's blurb says:

"For this comprehensive collection, the editor has brought together key readings on the subject of the law and economics of intellectual property rights – patents, copyrights and trademarks. It provides a judicious selection of the most important published research on this crucial topic, drawing equally from the law and economics literature. It thus brings together frequently cited classic articles that are rarely encountered in a single published source.

The articles have been selected on the basis of three primary criteria: their continuing influence in legal and economic discussions; their longevity (important in a field where the volume of published work is very large and growing very quickly); and their relevance to contemporary theoretical and policy debates. The chosen writings delve deeply into theory, empirics, and institutional detail, ranging from Edwin Mansfield’s early, influential study on patents and imitation costs, to very recent work on the relationship between copyright law and the first amendment. This collection makes an indispensable desk reference for scholars of intellectual property rights".

The IPKat says, when reviewing a work of this nature there's no point in taking issue with the authors of the individual chapters -- the quality of a collection must be measured by its breadth of intellectual scope and relevance to the modern reader. While this collection scores highly on that count, the Kat wishes that the editor had added a paragraph or two to each of the entries, whether by way of explanation or disclaimer, rather than allowing the assembled scholars and thinkers to speak timelessly for themselves. For example, Stephen Breyer's classic "Uneasy Case for Copyright" -- a piece that inspired and influenced this particular Kat's thinking when he read it in 1973 -- could do with a note on its subsequent history and there should be some sort of warning as to the relevance, if any, of Schechter's "Rational Basis of Trademark Protection" to trade marks as they have operated as market tools in today's world.

Bibliographic data: publisher: Edward Elgar. Volume 1: xiv + 482 pages; volume 2 viii + 586 pages. Hardback 978 1 84542 545 6. Price £295 (with online discount from publisher's website £265.50). Rupture factor: danger of double hernia if not handled carefully. Book's web page here.


A fascinating and rewarding read is Competition Law And Patents: a Follow-on Innovation Perspective in the Biopharmaceutical Industry, by Irina Haracoglou. The author, a lawyer and independent researcher/consultant, does not produce a description of the law so much as a sonnet, a reflection of her curiosity, sharp insights, perplexity and frustration at the slippery nature of the balance which is her declared objective.

What the publisher's blurb says:

"Within the broad context of the relationship between intellectual property rights and competition law, this book takes the example of research tools in biopharmaceutical research and innovation to examine the complexities of this relationship, and the ways in which the balance is struck between these two fundamental policies of law. It addresses a question that is certain to become paramount in other industries also: how to strike the balance between initial and follow-on innovation so as to ensure that access to ‘essential’ research tools (or other fundamental elements to follow-on innovation) is not impeded".

What the IPKat says: like Nuno Pires de Carvalho's work on TRIPs and undisclosed information (reviewed above), this is an attempt to identify a balance twin the opposite dynamic forces of IP monopoly and antitrust; another point of similarity is that each author considers this balance in a small, specialist niche within IP -- and their niches have a high degree of overlap. But there the similarities end. For while Nuno Pires de Carvalho works on the wide international canvas of the provisions of TRIPs and international law, focusing down on to specific issues and problems, Irina Haracoglou works upwards and outwards, starting with real problems and moving out towards possible solutions. She has done a jolly good job here, for which she should be congratulated.

Bibliographic data: Publisher Edward Elgar Publishing, 2008. 272 pp Hardback 978 1 84720 599 5. Price £69.95 (with online discount £62.96). Rupture factor: mild. Book's web page here.