Book review: Terrell on the Law of Patents

This book review is brought to you by Patent expert Dr Olga Gurgula, who is a Lecturer in Intellectual Property Law at Brunel Law School, Brunel University London and Visiting Fellow at the Oxford Martin Programme on Affordable Medicines, University of Oxford. Here is what she has to say about the latest edition of Terrell on the Law of Patents.

First published in 1884, Terrell on the Law of Patents has since become an important point of reference for patent practitioners, judges and all those interested in patent law. As this area of law has been evolving since then, so has the book been regularly updated to keep abreast of the developments in law and technology. It provides the most up-to-date and detailed commentary on all aspects of patent law, practice and procedure, prepared by a team of intellectual property specialists from Three New Square headed by Sir Colin Birss.

It is now in its nineteenth edition and includes commentary on important recent developments that have occurred since the publication of the 2016 edition, some of which would not have been possible to predict. They include, for example, the recent changes in the approaches to claim construction and the introduction of the doctrine of equivalents following the landmark decision of the Supreme Court in Lilly v Actavis. This decision has also affected a number of related issues (e.g. patent validity), and so the book helpfully highlights those matters that require answers. It includes a discussion on FRAND - the area of law that has seen a significant rise in the number of cases after Unwired Planet v Huawei and Conversant v ZTE & Huawei. It also provides a useful guide on plausibility and comments on Warner-Lambert v Generics regarding plausibility and infringement of second medical use patents.

The book comprises 24 chapters, and comprehensively covers each stage of the patent life - from application to infringement. It starts with an introductory Chapter 1, where it discusses the historic development of UK patent law, the sources of modern patent law and international conventions. Chapter 2 explains the nature of patentable inventions, including what an invention is, industrial applicability, excluded inventions and exceptions to patentability. Chapter 3 provides an overview of the process of obtaining a UK national patent, European patent (UK), a unitary patent (when the system will be operational) and the procedure for international applications under the PCT. Chapter 4 discusses matters of entitlements, while Chapter 5 explains certain issues related to granted patents, such as period of protection, opposition to the grant of a European Patent and employee’s rights to compensation. Chapter 6 is devoted to SPCs and highlights some recent developments in this area of patent law. Chapter 7 explains the rules on priority date and Chapter 8 provides a guide on the ‘person skilled in the art’ and common general knowledge. 

Syoma the cat relaxing
after a good read of Terrell
Image: Olga Gurgula

A significantly updated Chapter 9 on the construction of specifications and claims contains, inter alia, a detailed explanation on the modern approach and the Actavis v Eli Lilly case. Chapters 10 to 13 explain matters related to invalidity, including novelty, inventive step and insufficiency. Chapter 14 is all about patent infringements, providing a detailed discussion of general principles applying to infringements, the acts prohibited by s.60, statutory exceptions and other defences to infringements. Chapters 15 to17 discuss such matters as amendments of specifications, assignments, licences and compulsory licences. Chapter 18 elucidates on matters related to FRAND, explaining what FRAND undertakings are and how they arise, available injunctive relief and matters of competition law. Chapter 19 outlines important elements of practice and procedure. There is a separate Chapter 20 on the IPEC, which explains the shorter trial scheme. The final Chapters 21-23 discuss remedies for infringement, declarations and actions to restrain threats. The concluding Chapter 24 is dedicated to use by the crown, the significance of which has become notable in the time of COVID-19.   

The preface of the book mentions that the final proofing of this edition was undertaken during the lockdown caused by coronavirus. It is soothing to know that even the global pandemic could not hinder the completion of such a fundamental authority providing us with a rich source of knowledge and inspiration.   

19th Edition

ISBN:  9780414075306

Published by:  Sweet & Maxwell

Authors:The Hon Mr Justice Colin Birss; Andrew Waugh; Tom Mitcheson; Douglas Campbell; Justin Turner; Tom Hinchliffe

Publication Date:  22 May 2020