Patent Law And Theory

‘The editor of Patent Law and Theory must be congratulated for assembling a concentration of sheer patent law erudition and scholarship. The title is a noteworthy compilation of 26 well-written, remarkably accessible and thought-provoking essays that goes to great lengths in charting the contours of contemporary thought over the “the world’s oldest regularly established property right”. . . it manages to accomplish an ambitious endeavour of providing a comprehensive view of prevailing issues in the field of patent law and other related fields. . . the interested patent law reader will have much to gain from the fecund material found in the large majority of the title’s essays. The world’s corpus of patent law research is richer with the publication of this title.’
– John A. Tessensohn, European Intellectual Property Review

This major Handbook provides a comprehensive research source for patent protection in three major jurisdictions: the United States, Europe and Japan.

Leading patent scholars and practitioners join together to give an innovative comparative analysis both of fundamental issues such as patentability, examination procedure and the scope of patent protection, and current issues such as patent protection for industry standards, computer software and business methods. Keeping in mind the important goal of world harmonization, the contributing authors challenge current systems and propose necessary changes for promoting innovation.

Providing useful tips for practitioners to protect their intellectual assets in technologies effectively in the global market, this Handbook will be of great interest to legal scholars and students, as well as lawyers and patent attorneys.

Contents:

Preface

PART I: FOUNDATIONS
1. On the Economics of Patent Law and Policy
F. Scott Kieff

2. Patents and Policies for Innovations and Entrepreneurship
Ove Granstrand

3. History of the Patent System
John N. Adams

4. A Spanner in the Works – Or the Spanner that Works? Patents and the Intellectual Property System
Jeremy Phillips

5. International Treaties and Patent Law Harmonization: Today and Beyond
Tomoko Miyamoto

PART II: INTERNATIONAL AND COMPARATIVE DIMENSIONS: PROCEDURAL ISSUES IN EXAMINATION
6. Examination Procedure at the European Patent Office
Peter Watchorn

7. Appeal Procedure before the European Patent Office
Andrea Veronese

8. Patent Office Oppositions and Patent Invalidation in Court: Complements or Substitutes?
Jay P. Kesan

9. Trilateral Cooperation – Mutual Exploitation of Search and Examination Results Among Patent Offices with a View to Establishing a System of Rationalized Work-Sharing
Shinjiro Ono

10. ‘Lost in Translation’: The Legal Impact of Patent Translation Errors on Claim Scope
Donald S. Chisum and Stacey J. Farmer

PART III: CONDITIONS OF PATENTABILITY: ESSENTIAL REQUIREMENTS
11. Patenting Software-Related Inventions in Europe
Stefan Schohe, Christian Appelt and Heinz Goddar

12. Utility and Industrial Applicability
Christopher Wadlow

13. The Novelty and Priority Provision under the United States First-to-File Principle: A Comparative Law Perspective
Toshiko Takenaka

14. Back to the Graham Factors: Nonobviousness after KSR v. Teleflex
Elizabeth A. Richardson

PART IV: PATENT ENFORCEMENT ISSUES: EXTENT OF PATENT PROTECTION AND INFRINGEMENT REMEDIES
15. Extent of Patent Protection in the United States, Germany, the United Kingdom and Japan: Examination through the Concept of ‘Person Having Ordinary Skill in the Art of the Invention’
Toshiko Takenaka

16. Direct and Indirect Patent Infringement
Alison Firth

17. The Scope of Patent Protection for Spare Parts and its Extension through Other Tools of Intellectual Property
Horst-Peter Götting and Sven Hetmank

18. The Exhaustion of Patent Owners’ Rights in the European Community
Thomas Hays

19. Enabling Research or Unfair Competition? De Jure and De Facto Research Use Exceptions in Major Technology Countries
Sean O’Connor

20. Compulsory Licensing Under TRIPS and the Supreme Court of the United States’ Decision in eBay v. MercExchange
Christopher A. Cotropia

21. Adequate Compensation for Patent Infringement Damages: A Comparative Study of Damage Measurements in Japan and the United States
Toshiko Takenaka

22. Resolving Patent Disputes in a Global Economy
Rochelle C. Dreyfuss

PART V: CORE ISSUES IN THE FUTURE?
23. Challenges to the Sui Generis Regime of Pharmaceutical Patents
John R. Thomas

24. Current Controversies Concerning Patent Rights and Public Health in a World of International Norms
Cynthia M. Ho

25. Biotechnology Patent Pools and Standards Setting
Jorge A. Goldstein

26. Patenting Industry Standards
Vincent F. Chiappetta

Index