Patents: some light reading for a rainy day

This post features four very different recent publications in the field of patents.  If you are going on (i) a long journey, (ii) a short journey on the London Underground system or (iii) any journey at all which involves you having to pass through any British Airport Authority air terminal when all flights in and out of London have been grounded by the turbulent effect of butterflies flapping their cute little wings in Tuvalu, you may want to read them all, one after the other.  If you are more selective, discerning or (as we lawyers like to say) specialised, one or two only will suffice.  The four books are:

* Figures of Invention: a History of Modern Patent Law, by academics Alain Pottage and Brad Sherman and published by Oxford University Press.  Based in London but presumably not stuck in transit, Alain Pottage is a Reader in Law at the London School of Economics and Political Science, just down the road from this Kat's Holborn office, while Brad Sherman, now Professor of Law at the Griffith University, Brisbane, was formerly attached to the same institution.  According to the publisher,

"Taking the invention as its object of study, this book develops a radical new perspective on the making of modern patent law. It develops an extended historical and conceptual exploration of the invention in modern patent law. Focusing primarily on the figures that make inventions material, and on how to overcome the intangibility of ideas, this intellectually challenging book makes explicit a dimension of patent law that is not commonly found in traditional commentaries, treatises and cases.

The story is told from the perspective of the material media in which the intangible form of the invention is made visible; namely, models, texts, drawings, and biological specimens [This makes it conceptually stimulating to read, which is what the authors intend, but correspondingly a bit tricky to use as a conventional patent reference work]. This approach brings to light for the first time some essential formative moments in the history of patent law. For example, Figures of Invention describes the central role that scale models played in the making of nineteenth-century patent jurisprudence, the largely mythical character of the nineteenth-century theory that patents texts should function as a means of disclosing inventions [hang on there, some readers still believe this theory -- and it's more credible than Santa existing or Elvis still being alive ...!], and the profound conceptual changes that emerged from debates as to how to represent and disclose the first biological inventions [this has repercussions even now: we can ask whether the Budapest Treaty on the Deposit Microorganisms is still fit for purpose]. At the same time, this historical inquiry also reveals the basic conceptual architecture of modern patent law. The story of how inventions were represented is also the story of the formation of the modern concept of invention, or of the historical processes that shaped the terms in which patent lawyers still apprehend the intangible form of the invention.

Although the analysis focuses on the history of patent law in the United States, it develops themes that illuminate the evolution of patent regimes in Europe [In this regard, the US is the sun to Europe's moon. Europe reflects events and debates which are earlier and usually more articulately expressed in the US]. In combining close historical analysis with broad thematic reflection, Figures of Invention makes a distinctive contribution both to the field of patent law scholarship and to emerging interdisciplinary debates about the constitution of patent law and of intellectual property in general. ".

The IPKat enjoyed this book, and its approach, which he happily commends to anyone who already knows a bit about patent law and wants a book that will enhance his understanding without in any sense intimidating him.  The book is almost too short, since it almost leaves the reader wanting to know what happens next. Some of the footnotes are naughtily long and contain content which might, on reconsideration, be of sufficient importance to promote above the line, but that does nothing to detract from the pleasure of reading this work.

Bibliographic data: Hardback, xi + 212 pages.  ISBN 978-0-19-959563-1. Price: £70. web page here.  Rupture factor: none.

* Rules of Patent Drafting: Guidelines from Federal Circuit Case Law, by Joseph E. Root, is also published by Oxford University Press but, unlike Pottage and Sherman, this tome emanates from OUP's busy, bustling, practice-oriented New York desk.  The author set up his own company, QualiPat, to develop an innovative programme for teaching patent drafting and has had the personal satisfaction of being able to implement that programme with UnitedLex, a legal consulting, technology and outsourcing firm, where he created a team from a group of engineers.  But does this book give personal satisfaction too?  Says the publisher's blurb:

"Patents are invalidated every day for reasons often stemming from avoidable error [Isn't that what judges are for?]  Rules of Patent Drafting: Guidelines from Federal Circuit Case Law helps patent drafters avoid such errors with a set of patent drafting rules derived from Federal Circuit decisions. By focusing on drafting principles, instead of abstract legal concepts, the reader gains a coherent, integrated understanding of what the Federal Circuit requires. The rules point the way to confident drafting.

Rules of Patent Drafting: Guidelines from Federal Circuit Case Law addresses a major development in patent law over the last two decades - the Disclosure Revolution. Claim construction now depends more on support from the specification than any other factor, and other determinants of validity have followed suit [Can this be the "the largely mythical character of the nineteenth-century theory that patents texts should function as a means of disclosing inventions" to which Pottage and Sherman allude?] Written description, the doctrine of equivalents, and definiteness, all look to the specification to determine the application of each of these doctrines, and others as well. This book guides the drafter in meeting all the requirements that the Federal Circuit has set out for patent validity. Beyond demonstrating how to ensure bare validity, the book goes further to illustrate techniques for achieving desired coverage through rules teaching breadth in drafting, claiming, and prosecuting [Breadth is not for the faint-hearted -- woe to the applicant whose claims run wider than his invention!]

The rules-based approach to patent drafting provides a clear framework to assist both the beginner and the experienced practitioner [and you have the comfort of telling your client, if anything goes wrong, that it's not your fault because you kept to the rules]. A learner is guided through the facets of a rule piece by piece, looking to the Federal Circuit rationale for each clause. Seasoned drafters can quickly update themselves or clarify specific points with precision. For either reader, the clear exposition communicates essential information rapidly and thoroughly".

Says the IPKat, this helpful book saves the best bits for the end.  The last 100 pages or so are taken up with an extensive section on Avoiding Problems which is worth a read on its own, both for its functional utility and for its practical and realistic appraisal of the specific issues of inventorship and priority regarding which the unique provisions of US law are apt to seem so puzzling to the rest-of-the-worldies who might be reading it.  The author also reminds readers that the appropriate time to address problems is before they happen -- a piece of advice that readers might do well to carry with them beyond the portals of patent law and into the great wide world that lurks beyond it.

Bibliographic data: Paperback, xxxvi + 477 pages. ISBNs 13: 9780199734924 and 10: 0199734925. Price: $225. Book's web page here.  Rupture factor: none.

* DON'T File a Patent! is a book of passion, enthusiasm and of an unquenchable determination to persuade the reader of the virtues of the author's case.  The author, John D. Smith of Orlando, Florida, is no admirer of the patent system.  He is witty, knowledgeable and quick to identify faults in the ponderous patchwork of bureaucratic and professional practices which is the US patent system today.  While the comments contained in this self-published book are directed at the US system, readers from other jurisdictions may easily recognise the applicability of the author's barbs to targets nearer home.


How does the author characterise his book?  He explains in his own words:

"DON’T File a Patent! is the first and only book that shows you why NOT to file a patent application on your invention. In this book, you will learn that the Patents Office wants the inventor’s money, not their invention. You will see the roadblocks the Patents Office uses to discourage inventors with their repeated Patent Office patent application rejections. These Patent Office patent application rejections require inventors to continually re-submit their patent application and pay thousands in additional government filing fees, before their patent application are ultimately turned down.

Inventors who create innovative intellectual property like patents, trademarks and copyrights are told by their patent attorney or patent lawyer that they should protect their intellectual property rights and secure patent protection by doing a patent search and then file a patent application and a trademark application.

In this book, I’ll give you over 10 reasons why you should NOT file a Patent Application on your invention. You’ll learn that Utility Patents and patent protection are worthless and does not stop someone from copying your invention. You’ll learn that a patent attorney or patent lawyer will encourage inventors to file patent infringement lawsuits for the patent attorney benefit, not
to benefit the inventor or his invention. You’ll learn that infringement lawsuits are very expensive and the only one that will make money in a patent infringement lawsuit will be your patent attorney. You’ll see that Judgments gained as a result of expensive patent infringement litigation are worthless, as they are impossible to collect. You’ll understand that if you are a successful inventor or inventors and you have a successful invention or inventions, you will get ripped off by copycat competitors, as this is a sign of your invention success.

In addition to the truth about the terrible way you’ll be treated by the Patent Office, I’ll also share with you many experiences I have had over the last five years. I’ll describe and give you contact information for several other inventors and entrepreneurs that got a trademark on their brand name and are making and selling their products themselves, as you should be doing. ..."

The author's weapons do not consist solely of rage and indignation. He is no stranger to humour, as "A day at the Patent Office with Elaine Patenthosen (No patent examiners were harmed in the making of this parody video)" testifies. A successful inventor in his own right (details here), his words go straight to the heart.  The approach which he advocates is, the IPKat hastens to add, not one which is equally applicable to all inventions under all circumstances --  it may be particularly unsuitable for processes and for inventions that have no independent life of their own but are merely incremental add-ons to existing products.  However, for the one-patent-product scenario his advice makes a lot of sense and will be welcomed by small and some medium-sized enterprises which either can't afford patents at all or, if they get them, lack the financial and emotional resources to enforce them.


Bibliographic data: Book's website here. No risk of rupture, but don't read this if you're a patent attorney who is susceptible to apoplexy.  Price: US$ 24.95 plus packaging and posting which, as the author observes, "will cost you less than 10% of a 1 hour consultation with a patent attorney or patent lawyer" (available at the same price as an e-book).

* Terrell on the Law of Patents (17th Edition, 2011), is now edited by Richard Miller QC, Guy Burkill QC, His Honour Judge Birss QC and Douglas Campbell (all from Three New Square).  This book has been through the doldrums in its time, but successive editions since the 1970s have made it a much more useful book.  a tendency to paraphrase the relevant statute and then footnote the paraphrased provision has given way to some genuinely instructive guidance on the operation of the UK's Patents Act 1977 (as frequently amended), the most important decisions of the European Patent Office's variously-shaped Boards of Appeal and the indigenous judicial rulings and practice directions of the British courts and the UK Intellectual Property Office. 

It's difficult to introduce to readers a title which has been going since 1884 and which is familiar even to many folk who have never read it, so let's investigate the state of the current edition.  According to publishers Sweet & Maxwell, this edition has some new features:

"* Thoroughly revised and updated, with new or expanded discussion throughout of numerous current topics and recent developments in the law of patents;
* New chapters dedicated to Entitlement, to Supplementary Protection Certificates, and to the Person Skilled in the Art;
* Extensively expanded discussion of Validity issues, including major chapters now separately dedicated to Novelty, Obviousness, and Insufficiency:
* Incorporates discussion of all significant recent case law including the House of Lords decisions in Lundbeck v Generics and Conor v Angiotech, and the EPO Enlarged Board cases G2/08 and G3/08".

The IPKat couldn't bring himself to read this tome from cover to cover -- and noone would believe him if he said he did.  Has however found himself doing some sampling while using Terrell for some recent research, and found it to be crisp, current and accurate in all material respects.  He can predict with confidence that, like its ever-improving competitor The Modern Law of Patents (here), this title will run and run.

Bibliographic data: Hardback, with more Latin and Arabic pagination than this Kat can wave a paw at. ISBN: 9781847039033. Price £325 (nb there is no missing decimal point in that figure, but local delivery is free).  Web page here. Rupture factor: severe.