The IPKat has been taking a look at a new title on an old subject –The Requirement for an Invention in Patent Law, by respected Oxford academic Justine Pila. Justine Pila, an Official Fellow of St Catherine’s College, Oxford, is also University Lecturer in Intellectual Property and a great enthusiast for historical, doctrinal and theoretical dimensions to the subject, as this new title shows.

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How much information does a patent application have to disclose for it to be patentable? Usually this question is about whether an invention is sufficiently ‘enabled’, i.e. whether it provides enough information for a hypothetical skilled person to reproduce the invention without having to invent something along the way. In the complex area of patentability, however, this can also be about whether there is enough material in the patent specification for the claimed invention to have enough of a technical contribution over the prior art to justify an inventive step. Computer-implemented inventions (CIIs) are particularly prone to this problem, as anyone who has seen a typical patent specification for such an invention will already know. Is a block diagram, possibly with a nice cloud shape representing the internet, enough? What if the diagram represents a new way of buying something over the internet? Does it make a difference if there is something more complicated going on? If so, how much detail should the specification go into to stand the best chance of the application being granted in some form? These, and many other, questions are raised and addressed in “Patent Law for Computer Scientists“, a book written by four very experienced EPO examiners Daniel Closa, Alex Gardiner, Falk Giesma and Jörg Machek. With over 70 years of collective experience, and with backgrounds in physics, engineering and computer science, they have become apparently quite concerned at the enormous number of patent applications they have had to deal with, and mostly refuse, over the past couple of decades. With this book, they are offering to give something back to would-be applicants by providing some help on how to give their inventions the best chance of success at the EPO.

The book kicks off with some background on the subject, which takes the reader from the basics of what a patent is about through some enlightening figures about how many ‘software patents’ there really are out there (about 17,000 patents with some IT flavour are granted by the EPO each year, about a quarter of the total), to some examples of where patent applications in the software field have become public spectacles, including the infamous Amazon series of applications. There is also a useful discussion of the general differences between how applications are dealt with in the USA, Japan and Europe. Unsurprisingly, the EPO tends to be the most strict, the USPTO the least strict, and the JPO seems to lie somewhere between the two.

The bulk of the rest of the book is then taken up with various example cases of made-up inventions, which have clearly been derived by the authors from their experience of many real-life cases. These case studies illustrate the many areas in which CIIs are usually applied and, most importantly, where they most often run into trouble at the EPO. The examples range from a method of selling over a network (which has considerable similarities to the type of invention from the well-known Hitachi decision of T 258/03), to methods of implementing digital rights management, multi-player games and e-learning systems. In each example, the authors describe an invention at various levels of abstraction, gradually adding more and more technical details until the claimed invention resembles something that might reasonably be seriously considered at the EPO for inventive step and not simply dismissed without the need for a search.

The examples in their various fields build up to cover many, if not all, of the conceivable types of inventions that a patent attorney might face technical problems with at the EPO, and together give the reader a very detailed picture of how to go about claiming an invention in the ‘right’ way as far as the EPO is concerned. In most cases this is unfortunately unlikely to be of much direct help to an applicant because, by the time an application faces the types of objections mentioned, it is far too late to do anything about it. This is where the reader may realise that the main use of this book is not really as a ‘how to’ guide to getting applications with no hope through the EPO system successfully, but as something to help an applicant prepare for getting a patent specification prepared properly at the outset.  As a result, the IPKat is a little confused about exactly who the book is properly aimed at, as it doesn’t really seem to be only for computer scientists.  Using the EPO-style interpretation of the word ‘for’, it seems to be also very suitable for European patent attorneys with an interest in the field of computer-implemented inventions, and particularly well suited for US attorneys who might like to think beyond the requirements of the US system when preparing their applications for being filed internationally. For any of these people, as well as the occasional pro-patent computer scientist, the IPKat would highly recommend it.

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Is politics a dirty word? Not when it’s part of a book title. And for those who enjoy thinking/worrying about the political dimensions to IP, this book is just for them: it’s Politics of Intellectual Property: Contestation Over the Ownership, Use, and Control of Knowledge and Information, edited by Sebastian Haunss (University of Konstanz, Germany) and Kenneth C. Shadlen (London School of Economics and Political Science).

Bibliographical details: published 2009. ix + 249 pages. Hardback. ISBN 978 1 84844 303 7. Price £59.95 (with publisher’s online discount £53.96). Rupture factor: low. Web page here.

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Let no-one assert that the IPKat’s reading preferences are so blinkered that he’s only interested in books that deal purely with intellectual property. He also sometimes takes a look at books that only partly deal with intellectual property. One such title is The WTO, Intellectual Property, E-Commerce And The Internet, edited by Rohan Kariyawasam (Senior Lecturer in Commercial Law, Cardiff Law School, Cardiff University, Wales). This is the sort of publication you buy if (i) you can’t afford your own library but (ii) you have a pressing need to keep a large selection of multidisclinary WTO/IT/Competition/IP literature at your fingertips.

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In the olden days when he was but a little kitten, the IPKat never had much use for Case Books. For the most part, they struck him as an excuse for not reading cases as reported in the Law Reports. Also, for some reason that he could never fathom, the case books on his undergraduate reading lists were never the ones that were designed for use with the recommended textbooks. The sole exception was the first edition of Tony Weir’s Casebook on Tort, an edgy, querulous compendium of questions, observations and literary allusions which was not so much in-your-face as up-your-nose.

“* Focusing on domestic intellectual property law, while placing it firmly in its international context allows students to gain a broad and thorough understanding of IP as a global subject;

* Combines well-chosen excerpts from case law and secondary materials with stimulating commentary;

* Carefully written and developed to map closely onto intellectual property law courses;
* Provides a selection of relevant further reading;
* Supported by a specially designed Online Resource Centre which provides updates of recent developments in the law and links to relevant websites;
* This book provides a complete resource for undergraduate and postgraduate students of intellectual property law. It is designed to be the first of its kind, in combining extracts from major cases and secondary materials with critical commentary from experienced teachers in the field”.

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