Patent Law And Theory: A Handbook Of Contemporary Research (research Handbooks In Intellectual Property)

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 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. On The Economics Of Patent Law And Policy / F. Scott Kieff -- Patents And Policies For Innovations And Entrepreneurship / Ove Granstrand -- History Of The Patent System / John N. Adams -- A Spanner In The Works : Or The Spanner That Works? Patents And The Intellectual Property System / Jeremy Phillips -- International Treaties And Patent Law Harmonization : Today And Beyond / Tomoko Miyamoto -- Examination Procedure At The European Patent Office / Peter Watchorn -- Appeal Procedure Before The European Patent Office / Andrea Veronese -- Patent Office Oppositions And Patent Invalidation In Court : Complements Or Substitutes? / Jay P. Kesan -- 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 -- 'lost In Translation' : The Legal Impact Of Patent Translation Errors On Claim Scope / Donald S. Chisum And Stacey J. Farmer. Patenting Software-related Inventions In Europe / Stefan Schohe, Christian Appelt And Heinz Goddar -- Utility And Industrial Applicability / Christopher Wadlow -- The Novelty And Priority Provision Under The United States First-to-file Principle : A Comparative Law Perspective / Toshiko Takenaka -- Back To The Graham Factors : Nonobviousness After Ksr V. Teleflex / Elizabeth A. Richardson -- 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 -- Direct And Indirect Patent Infringement / Alison Firth -- The Scope Of Patent Protection For Spare Parts And Its Extension Through Other Tools Of Intellectual Property / Horst-peter Götting And Sven Hetmank -- The Exhaustion Of Patent Owners' Rights In The European Community / Thomas Hays. Enabling Research Or Unfair Competition? De Jure And De Facto Research Use Exceptions In Major Technology Countries / Sean O'connor -- Compulsory Licensing Under Trips And The Supreme Court Of The United States' Decision In Ebay V. Mercexchange / Christopher A. Cotropia -- Adequate Compensation For Patent Infringement Damages : A Comparative Study Of Damage Measurements In Japan And The United States / Toshiko Takenaka -- Resolving Patent Disputes In A Global Economy / Rochelle C. Dreyfuss -- Challenges To The Sui Generis Regime Of Pharmaceutical Patents / John R. Thomas -- Current Controversies Concerning Patent Rights And Public Health In A World Of International Norms / Cynthia M. Ho -- Biotechnology Patent Pools And Standards Setting / Jorge A. Goldstein -- Patenting Industry Standards / Vincent F. Chiappetta. Edited By Toshiko Takenaka. Includes Bibliographical References And Index. Edward Elgar Pub Contents 6 Figures and tables 9 Contributors 10 Preface and acknowledgement 13 Chapter 1: On the economics of patent law and policy 16 Chapter 2: Patents and policies for innovations and entrepreneurship 79 Chapter 3: History of the patent system 114 Chapter 4: As spanner in the works – or the spanner that works? Patents and the intellectual property system 145 Chapter 5: International treaties and patent law harmonization: today and beyond 167 Chapter 6: Examination procedure at the European Patent Office 204 Chapter 7: Appeal procedure before the European Patent Office 237 Chapter 8: Patent Office oppositions and patent invalidation in court: complements or substitutes? 259 Chapter 9: Trilateral cooperation – mutual exploitation of search and examination results among patent offices with a view to establishing a system of rationalized work-sharing 284 Chapter 10: 'Lost in translation': the legal impact of patent translation errors on claim scope 302 Chapter 11: Patenting software-related inventions in Europe 338 Chapter 12: Utility and industrial applicability 368 Chapter 13: The novelty and priority provision under the United States first-to-file principle: a comparative law perspective 396 Chapter 14: Back to the Graham factors: nonobvious after KSR v. Teleflex 427 Chapter 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 invention' 456 Chapter 16: Direct and indirect patent infringement 476 Chapter 17: The scope of patent protection for spare parts and its extention through other tools of intellectual property 501 Chapter 18: The exhaustion of patent owners' rights in the European Community 514 Chapter 19: Enabling research or unfair competition? De jure and de facto research use exceptions in major technology countries 532 Chapter 20: Compulsory licensing under TRIPS and the Supreme Court of the United States' Decision in eBay v. MercExchange 570 Chapter 21: Adequate compensation for patent infringement damages: a comparative study of damage measurements in Japan and the United States 597 Chapter 22: Resolving patent disputes in a global economy 623 Chapter 23: Challenges to the sui generis regime of pharmaceutical patents 658 Chapter 24: Current controversies concerning patent rights and public health in a world of international norms 686 Chapter 25: Biotechnology patent pools and standards setting 725 Chapter 26: Patenting industry standards 735 Index 770 ISBN-13:,9781845424138 Offers a comprehensive research source for patent protection in three major jurisdictions: the United States, Europe and Japan. Offering tips for practitioners to protect their intellectual assets in technologies effectively in the global market, this book is of interest to legal scholars and students, as well as lawyers and patent attorneys