Book Review; Research Handbook on Patent Law and Theory

This Kat has reviewed the  The "Research Handbook on Patent Law Theory", second edition Edward Elgar Publishing, edited by Toshiko Takenaka offers  a comparative approach  by which  salient issues of patent law are discussed from the principal vantage  of  three major jurisdictions, the United States, Europe and Japan. In addition,  the book includes an amalgam of chapters, some of which t are concerned with the theoretical and historical foundations of patent law, a while others consider specific challenges faced by patent law practitioners.

What will you find in the book?

The book is structured in five parts, each covering a separate area of modern patent law. The first part of the book (three chapters) concerns the foundation of the patent system, the first  on the "History of Patent Law", the second on the the "International Treaties and Patent Law Harmonization", and the third on "Patents and Policies for Innovations and Entrepreneurship".

Part II of the book is dedicated to current issues concerning the patent examination procedure. The first chapter of this part concerns the trilateral cooperation between EPO, USPTO and JPO, and how this has influenced the development and (hopefully)  also the harmonization of their respective examination procedures the.

Other aspects analyzed in this part of the book are the examination of patenting software-related inventions in Europe, as well as  challenges in the examination of medical inventions. Finally, this   part of the book discusses the impact of the ruling in Regents of the University of California v Eli Lilly & Co and how  this case has influenced the application of the written description requirement in the US.

Part III of the book concerns patent enforcement and has a special focus on US and Germany.  The first chapter presents the challenges with claim construction and the balance between claims and disclosure in the US and Germany,  while the second chapter discusses issues of patent enforcement in Germany with a particularly interesting analysis of procedural issues.

The authors provide and analyze the legal grounds and criteria in  calculating patent damages in the US and Japan. Furthermore, challenges concerning the international litigation of patent disputes (and the need for some form of extra-territorial solution) are discussed.The last chapter of this part continues in a similar vein in addressing  specialized IP courts, with special focus on the Unified Patent Court.

Part IV, the final part of the book, bears the title “Current Issues”, and addresses, as the title suggests, such central current issues  as pharmaceutical patents, patent litigation reform in the US, the interface between design patent and utility patent, and controversies concerning patent rights and public health  at  an international level.

The book includes yet a further part (Part V) which includes only one chapter dedicated to a comparative study of the examination of the inventive step criteria.

Who should read it?

As both the profile of the authors and table of contents of the book suggests, its contents contain valuable contents for both  practitioners and academics.  Thus, on the one hand, it offers hands-on answers to   such  questions as examination of patentability criteria, claim drafting and claim interpretation, while at the same time offering insightful historical and theoretical overviews  of the patent system and  possible future developments.  

Potential weaknesses?

One potential comment that comes with the choice of the approach taken by the book (a mixture of practical and theoretical questions) is that it will most probably be used as an anthology, where the reader chooses and picks certain chapters of interest, depending on the profile and perspective.

In total

An exciting read, containing perspectives that are must read for the patent-interested lawyer or academic of today.

Edward Elgar Publishing, ISBN: 978 1 78536 411 2 , 512 pp., Publication Date 2019, Hardback