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Book review

HHJ Michael Fysh QC, Ashley Roughton, Phillip Johnson and Trevor Cook (eds), The Modern Law of Patents , Second (Lexis Nexis, 2010) ccxxxvi + 1921 pp

Marc D Mimler

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Five years after its inaugural edition, LexisNexis has published a successor to its patent law flagship The Modern Law of Patents. All the general editors are esteemed experts in the field of patent law. Although all the editors are practising lawyers, each editor is highly respected within the academic field as well. The editors' work was supported during the writing of this edition by Judge Michael Fysh QC, who acted as a consultant editor. The editors also had the assistance of contributing practitioners and academics. The targeted readership of the book consists largely of practising patent lawyers and patent attorneys but it is not premature to say at this point that it will also be of great benefit to anyone who has an interest in patent law as it is applied and practised in the United Kingdom.

The editors have shown great ambition in this second edition – they have not merely brought the book up to date but rather the entire text was largely rewritten. A key change to the first edition is that the editors have formulated a discussion of patent law and its practice as it applies not only in the UK Intellectual Property Office (IPO) but also in the European Patent Office (EPO). Possessing an understanding of European patent law and its application by examiners and the Boards of Appeals at the EPO is indispensable for the British reader given that a vast majority of UK patents are typically examined and granted on the shores of the river Isar. But rather than simply integrating the law and practice of the EPO into the discussion on UK patent law, the book deals with these issues separately. This modification might seem trivial at first, but upon commencement of reading this separation soon reveals itself to be a tremendously useful feature of the book as it allows the reader to instantly compare the sometimes divergent approaches taken in the UK and at the EPO.

The book is divided into five parts. It begins with a discussion of the substantive law of patents. The aforementioned separation between the discussions of the practices in the United Kingdom and the European Patent Office is maintained throughout all the patentability criteria. For instance, the discussion on the ‘inventive step’ highlights concisely the differences of the ‘Problem-Solution Approach’ and the ‘Windsurfing/Pozzoli’ approach, having first introduced both approaches separately. This approach brings some much-needed clarity to the issues.

The various ways of obtaining patent protection in the United Kingdom, i.e. through prosecution before the Intellectual Property Office or the European Patent Office and by means of the Patent Cooperation Treaty (PCT), are covered in detail in Part 3. Furthermore, the final chapter of the part deals with arguably the most important issue – claim drafting. From reading this piece the reader is likely to agree with the author's argument that ‘drafting is rather more an art than a science’. It is to the great credit of the editors that this chapter manages to shed light on this somewhat blurry issue. In particular this is achieved by providing a specific example to the reader, an example which demonstrates clearly what ought to be taken into consideration when patent claims are being drafted.

The procedural issues of patent law are dealt with throughout Part 4 of the book. Starting with the proceedings before the courts of England and Wales, the text continues with an analysis of the procedures that must be undertaken before the British and European patent offices. The important question of jurisdiction and enforcement of judgments is subsequently discussed. A good overview of the application of the Brussels Regulation with regard to patents is also provided. The discourse concerning the minute particularities of patent disputes, such as those cases famously decided by the European Court of Justice in Gat v Luk 1 and Roche Nederland BV v Primus, 2 is given a concise and clear analysis.

Since enforcing patents is a costly venture – something that is particularly true in the context of the United Kingdom – the settlement of patent disputes by arbitration represents an attractive alternative. Though the arbitration of patent disputes appears to have become fashionable only recently, it was interesting to learn over the course of reading this book that arbitration has been available as a means of resolving these disputes for over a hundred years. Notably, the author puts forward a convincing argument in favour of the ‘arbitrability’ of patent disputes.

Part 5 is entitled ‘Miscellaneous’, which implies that this part contains issues that did not fit into the previous chapters. These issues include the increasingly important topic of the interface between patents and competition law, as well as border measures and supplementary protection certificates. The chapter also discusses the application of competition rules to patents and it provides a practical view on this important issue.

The appendixes of the book provide a brief overview of the more foundational issues of patent law, such as its history and the justifications commonly given for the granting of patents. Although this inclusion of this foundational section is not a mandatory requirement for a practitioner's text, this inclusion proves to be of great use for any reader who may wish to delve a bit further into the theoretical issues surrounding patent law. In fact, this section of the book may also provide the reader with some new insights on these issues. Furthermore, the section looking at future developments gives the reader an indication of the direction that patent law might be heading towards over the next decade and beyond.

The appendixes conclude with the texts of pleadings and precedents, as well as the texts of the most relevant patent statutes in the United Kingdom, the European Patent Organisation (EPO), the World Intellectual Property Organization (WIPO) and the European Union (EU). Additionally, the relevant procedural rules are attached thereafter. As the law of patents is largely governed by statutory legislation, the inclusion of these provisions will assist the reader in forming a strong understanding of the law.

Without doubt, The Modern Law of Patents fully serves its purpose. Further to this, it is an enjoyable read. Through its structured and comprehensive format the reader will find a trusty companion on the epic journey through the law of patents. One minor issue that the reader might have concerns the fact that the publication is printed on ‘bible paper’. This can prove to be a bit of an annoyance for the reader whenever he or she attempts to find a particular page. The reader may find him- or herself gripped by a constant fear of accidentally ripping or tearing one of the two thousand pages in this worthy and authoritative tome. But then again, it is the contents of a book that really matters. In other words: The second edition of The Modern Law of Patents is a must-have for patent lawyers and attorneys.

  • 1

    [2006] ECR I-6509.

  • 2

    [2006] ECR I-6534.

Affiliations

Mimler, Marc D - Research Assistant and PhD Candidate, Queen Mary Intellectual Property Research Institute (QMIPRI), Queen Mary University of London