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The fourth edition of this highly acclaimed book provides a complete description of the
techniques and industry know-how that underlie successful worldwide patent practice and portfolio
management. It guides the reader through the legal and procedural complexities of the British, European,
Japanese, and U.S. patent systems, and explains in detail the role of patent practitioners in maximizing
the commercial potential of innovative products. This edition discusses recent changes in practice in
the PCT system, the Patent Law Treaty and the major revision of the EPC, modification of the
TRIPs agreement to allow compulsory licences for export, important recent case law, and more.
From the Preface: “...[T]he present edition brings us up to date with developments up to May
2004. The next five years may bring more profound changes, particularly if the proposed Community
Patent becomes reality. But to judge from past performance, if I were to wait for that to happen
before writing a new edition, we might all be waiting for a long time. In the preface to the Third Edition,
I said that ‘most of the changes since the previous edition have been positive ones.’ I wish I could
say the same about the more recent changes, but the fact is that the tide of support for strong
intellectual property (IP) protection, which reached its high-water mark in the mid-1990s, is now on
the ebb...These things go in cycles, and no doubt things will improve again in due course...”
Target Audience: Patent agents, scientists, managers, and researchers who are active in the
chemical, pharmaceuticals, and biotechnology fields.
Table of Contents:
Introduction and Background to the Modern Patent System:
The Nature and Origin of Patent Rights
Historical Developments in Industrialized Countries
Patents in Developing Countries
Patent Law and Procedure:
What Can Be Patented
Filing a Patent Application
Obtaining a Granted Patent — National Procedures
Obtaining a Granted Patent — EPO and PCT Procedures
Maintaining a Patent in Force and Extending the Patent Term
Enforcing Patent Rights
Invalidity and Amendment of Granted Patents
Patentability of Inventions in Specific Technical Fields:
Chemical Inventions
Pharmaceutical Inventions
Biotechnological Inventions
Patenting of Genes, Plants, and Animals
Software-Related Inventions
Patenting in Practice:
The Patent Practitioner and His Functions
Drafting the Patent Specification
Drafting the Claims
Prosecution of the Patent Application to Grant
Patents and Information
Commercial Exploitation of Patents:
Inventorship, Ownership, and Compensation
The Commercial Exploitation of Patents
How to Catch the Infringer — And How Not to Be Caught
Patent Aspects of Licensing
Patents and Competition Law
Glossary of Patent Terms and Jargon
Index
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