Book Review: A Practitioner’s Guide to European Patent Law (with a discount code)

This Kat is delighted to review “A Practitioner’s Guide to European Patent Law: For National Practice and the Unified Patent Court” (Hart Publishing, 2022, 664 pp.). The book, now in its second edition, is authored by Paul England, with contributions from several other authors, including our former GuestKat Peter Ling.

The book consists of seventeen chapters, mainly on substantive law, but it also addresses certain procedural matters and questions of international private law. This edition also contains new chapters on evidence, declarative actions (e.g., non-infringement or that a patent is standard essential), and on FRAND (fair, reasonable and non-discriminatory) licensing.

The book’s main focus being substantive law, most of the chapters cover core issues of patent law. This includes patentability criteria (addressed in chapters 9 to 13), the person skilled in the art (analysed in chapter 1), patent claims (discussed in chapter 2), and supplementary protection certificates (covered in chapter 14).

Infringement issues are addressed in chapters 3-5. These include direct infringement, indirect infringement, as well as general defences available to a patent infringement defendant (e.g., the Bolar exemption and exhaustion).

Additionally, in chapters 16 to 17, the book considers several salient procedural issues: collecting evidence and cross-border litigation in Europe.

Patent jurisdictions, covered across the chapters, include the UK, France, Germany, the Netherlands, as well as the European Patent Office (EPO). The analysis is supplemented with relevant cases from such additional countries, as Italy, Sweden, Denmark, and Switzerland. Every chapter also includes a final section, which explains the key issues for the given subject-matter in light of the Unified Patent Court (UPC).

The chapters primarily address patent law legislation writ large, such as the European Patent Convention, national patent laws, and the Supplementary Protection Certificates Regulation), as well as such other sources such as the Enforcement Directive, the Trade Secrets Directive, and the Customs Regulation. An index contained at the beginning of the book conveniently identifies these legal sources.

The book also provides useful tables that summarise national approaches to most relevant issues. For instance, the tables discuss the extent to which national courts take into account EPO case law, how essential elements of the invention are identified to decide on indirect infringement, and which jurisdictions accept protective letters in patent litigation.

This Kat's attention was especially drawn to chapter 7 on standard essential patents (SEPs) and FRAND licensing, and chapter 14 on supplementary protection certificates (SPC).

With regards to SEPs litigation, the authors discuss the methodologies, applied by national courts to determine FRAND rate (i.e. the comparable license method and the top-down approach). They analyse methods to compare and value patent portfolios, steps necessary to establish the FRAND rate. Also discussed are principles that govern anti-suit injunctions and anti-anti-suit injunctions in SEP litigation.

In the chapter dedicated to supplementary protection certificates, the authors review national approaches in view of the extensive case law by the Court of Justice. The SPCs are granted by national patent offices, which leads to a fragmentation of the system. In this light, the chapter provides with useful overview of national approaches to what an “active ingredient” is, or what the “basic patent in force” is for products, which combine several active ingredients (the so-called “combination products”).

This post reviews only some of the book’s rich contents. This reviewer recommends readers to consult the book's detailed table of contents and table of cases, nearly 100 pages in length.

Publisher: Hart Publishing

ISBN: 9781509947645

Hardback price: £180.00 (our readers get a special discount code: GLR T5TUK)

Extent: 672 pp.