October 5, 2014
My peer-reviewed book review of Intellectual Property at the Workplace: Theoretical and Comparative Perspectives by Dr Shlomit Yanisky-Ravid has now published in the Journal of Intellectual Property Law and Practice.
In the review I have tried to give a fair and comprehensive overview of the contents and of the author’s prescription for improving the system. I then have commented somewhat extensively on her thesis.
As I have discovered over the years since I studied Labour Law under Shlomit, I have a very different philosophy of life and political orientation than she does. Nevertheless, I note that she is motivated by Tickun Olam and is trying to right what she sees as wrong. I applaud this.
Although I disagree with most of her conclusions, I consider the book an enjoyable and thought provoking read and a worthwhile addition to any Israeli practitioner’s bookshelf.
Intellectual Property at the Workplace: Theoretical and Comparative Perspectives Shlomit Yanisky-Ravid Nevo and Ono, 2013, 549 pp. Price: ILS 480 (approx. £ 82)
I am reproducing the report (with permission in full below. I am interested in any comments from readers and am sure Dr Shlomit Yanisky-Ravid will be as well.
The book explains the current state of IP law in Israel with respect to employer–employee rights, and compares it primarily to other regimes that use the Anglo-American common law system, but also to the Continental civil law systems as practised in Germany and France.
The book opens with an overview of different rationales for IP law, including:
the law and economics argument (Heller—the tragedy of the commons);
the benefit of labour approach (Locke and Marx);
the personhood theory (Radin and Marx);
the wealth distribution model (Rawls).
The book analyses the fact that employee-invented patents are owned by the employer, and not the employee. The author reasons that patents for inventions should be owned by the employee as the one who labours and whose personhood is reflected in the invention, since this leads to a more equitable distribution of wealth. Thus all the models, apart from the law and economics approach, lead to the conclusion that the employee should own the rights to a patent on an invention based on his labour.
The author sees the employer–employee relationship as stacked against the employee. She eloquently makes a case for changing the law through legislation, but also attempts to show how the law, as currently formulated, could be creatively interpreted to assign rights to the employee. She would like cogent legislation to prevent employees signing away their rights to future IP they create. Such assignments should only be made after creation. Companies are expected to be compensated for their investment.
There is an interesting chapter on women inventors, or rather their scarcity, and the underlying causes. This is not totally tangential to the discussion, since it indicates a similar flaw in the current legal system and the resultant division of ownership. The author posits that, as with IP law, the inherent bias causes an inequitable division of resources that further entrenches inequalities. She notes that over the five-year period from 2000 to 2005, only 1.9 per cent of patentees receiving Israel patents were women, 30 per cent were men and the rest were companies. With regard to employee inventions, 13 per cent of named inventors were women and 87 per cent were men. This is understood to imply that women more often invent as part of teams, but are rarely at the narrow apex of the pyramid. The author cheerfully notes that her analysis does not directly prove the source of the discrimination. Nevertheless, a feminist approach to IP rights is presented, the book purporting to address the legal and other structures that exclude women from owning IP rights.
The author considers that property rights per se have been under-analysed from a gender perspective, and that the traditional patriarchal society has defined property in a way that favours men. The situation in IP rights, in general, and patents in particular, is seen as an extreme example of this built-in discrimination. Citing McKinnon (Catharine A. MacKinnon, Feminism Unmodified, Discourses on Life and Law, 1987 and Towards a Femist theory of the State, 1989), Gilligan (K. Gilligan, In a different voice, the theory, psychology and development of the woman, Hebrew Translation, 1995) and Fisk (Catherine L. Fisk, Removing the ‘Fuel of Interest’ from the ‘Fire of Genius’: Law and the Employee-Inventor, 1830–1930 65 University of Chicago Law Review 1127 (1998)), the author reaches the radical conclusion that the fact that women are not often named as inventors is proof that the legal system, the definition of patentable subject matter and the concept of ownership inherent in the concept of intellectual property as property all discriminate against women. The biases in patent law that result in this discrimination are not apparent, but they would not be expected to be discernible since they are so deeply entrenched. Bias is not, however, purely a masculine aspect of IP law. Other sectors of society are under-represented amongst inventors and owners of intellectual property and these similarly show that the system is biased. Affirmative action is proposed. Specifically, there should be a minimum quota of female examiners in the Israel Patent Office and in government entities. Forcing commercial companies to employ women in R&D is also suggested, but not stressed. The author toys with the idea of widening the definition of inventor to include research assistants, lab workers and junior staff.
The book notes that academics own the copyright in their papers and books, despite being employed by universities, and also notes that university inventors are often awarded 30–50 per cent of the royalties: universities seem to thrive under this relationship. This is seen as a model to be emulated by the medical and industrial sectors.
Returning to general service inventions, the author proposes that the names of employee-inventors of service inventions should be disclosed by law and that this should be done immediately. Their moral right to be named should be cogent. Other moral rights may be weaker. She suggests that where employees assign their rights to companies, it should be ex ante, and that clauses in service contracts that call for assigning any and all future inventions to the company should be illegal.
Apart from cases where employees are employed to invent or where a company has invested capital, employees should be under no obligation to assign their rights. Where they do, they are entitled to proper compensation, thereby increasing the size of the cake. The standard tests of who is an employer and who is to be considered an employee, as far as service inventions is concerned, should take into account the developments in labour law but it will be noted that, in labour law, these provide rights to the employee, whereas in IP law these take rights away.
The author promotes a model that attempts to find a golden mean among the different theoretical models justifying IP, noting that the current model is almost exclusively economy-based, apart from some moral rights in continental countries. In her view, the first owner should always be the inventor or creator. The right to be acknowledged as such is cogent and cannot be waived. Where a work product is assigned to the company, the name of the employee inventor must remain a matter of record. The consideration for so doing is only to be negotiated at the time that an invention is transferred to the employer, and may even be subsequently negotiated if conditions change. The consideration is to be a percentage royalty minus costs, similar to that adopted by academia (except Germany).
The reason why such a model is not adopted anywhere is that IP laws are always uni-dimensional, being based on a single model, the economic one. In Israel, there has been no deep conversation on the subject, and the current model is uni-dimensional, reflecting economic considerations only. The model suggests new legislation, and in the meantime, creative interpretation, to address this issue.
The author argues that the current Israel law can be interpreted as indicating that any medical invention by a medical doctor is owned by the employer. She argues that medical doctors, excluding lab workers, for example, are not employed to invent, but rather to heal. According to the model, their inventions are not generally connected to the hospital or health fund, and the doctor should be able to develop his or her idea independently and not be under obligation to assign it to his or her employer. Similarly, technicians and other employees of hi-tech firms, excluding R&D personnel, are not employed to invent, and any inventions should be theirs to license or assign to the company only if sufficiently compensated for doing so.
The author then lists the principle of her model for interpreting the current Israeli law, and preferably for amending it through legislation. Not to be accused of unjust modesty, she further proposes that it be used as the basis for a new international convention to regulate the field.
Employee creations and inventions are the employees’. Any assignment to the employer will be ex ante and case-specific, and not in an employment contract apart from exceptional cases where part of the job description is to invent or create. There will be no obligation to assign where: (a) the employer’s contribution is not significant, such as where the use of the employer’s resources is incidental; (b) the employee’s contribution to the product is significant; or (c) the creation is worthless. The guiding principle is that the employee’s inventions will belong to the employee.
Assignments to the employer are to be made only after the product is developed and where the employer has a genuine interest due to having initiated the product, supervised it, invested in it, contributed to it and used the employer’s own resources. The assignment will be in accordance with cogent law and in writing. If non-economic considerations (theory of person, product of labour and wealth distribution) outweigh economic ones, the assignment will be void. Certain categories of workers, such as researchers, may be considered employed to invent: in such cases, products will be assigned to the employer. Such assignments will anyway require due consideration. Only a priori obligations to assign in the employment or other contract that relate to employees in a narrow closed list, such as those employed to invent, should be upheld. These should be specific exceptions to the general rule that ownership belongs to the employee.
Consideration for assigning service inventions to employer should be real and concrete, possibly a percentage such as that adopted by universities (40 per cent). If either party is unhappy with the percentage, they should have access to courts. There should be a minimal compensation to the employee that is cogent, which cannot be overridden by contact law.
The inventor or creator has the right to be acknowledged as such. Authorship is not transferable. Other moral rights are considered less relevant. To the extent that they are developed from time to time, they may be transferred, but the employee can always rescind the transfer. As far as patents are concerned, the inventor has to sign forms to the effect that he is the inventor and the inventors and their details should be noted in the official record. Failure to do so may invalidate the patent.
After the end of the employer–employee relationship, the employee can develop the invention. However, the previous employer is entitled to claim a reimbursement for the use of resources during the employment period.
No transfers or other arrangements prior to the creation or invention will be upheld.
The law is to be cogent and cannot be changed to the detriment of the employee.
The original intent was to transfer all rights to the employee but, after further deliberation and discussion, a more moderate model is proposed, as outlined above, for consideration by employers, employees, legal representatives and the judiciary in Israel and elsewhere.
I hope that the fact that the ‘Introduction and Overview’ is also in English implies that the book will eventually be republished in English, perhaps in a more universal rather than Israel-focused form. This will open the discussion to a wider audience.
The book is a thick hardback that looks impressive on the bookshelf. As the subject matter covered comes up fairly frequently in consultations with inventors and employers, and since the law is different in different jurisdictions, I suspect I will be consulting it frequently. In Israel, it seems that it is fast becoming a core reference in this key area.
The Paris Convention of 20 March 1883, last amended on 28 September 1979, seems to have been missed by the author. Article 4ter of this Convention states categorically: ‘The inventor shall have the right to be mentioned as such in the patent.’
I don’t know why the application form used by the Israel Patent Office does not require mentioning the name of the inventor of patent applications by companies that are not Patent Cooperation Treaty National Phase entries, but I don’t believe that forcing it to will make much difference to anyone, since virtually all employee inventions filed in Israel are also filed in the USA, where the names of the inventors are always mentioned. The information is easily accessible.
As the percentage of women inventors of company inventions is more than double the number of women inventors on applications filed by the inventors themselves, the argument that companies discriminate against women inventors is untenable. The author proposes affirmative action in appointing female examiners, whilst noting that, in 2005, 18 out of 32 Israel examiners, ie 56 per cent were women. I do not see any correlation between the gender ratio of examiners and the gender ratio of inventors. I suggest that women are more attracted to becoming civil servants, such as examiners and to working for Tech Transfer Companies of Universities rather than in private IP practice, since such work has more regular hours, better job security and better social conditions, albeit lower salaries. I think this is also an attraction of university tenure. Inventing is very different from providing IP services, whether as an examiner or in private practice.
The data on Israel patents which are presented in this book are nearly a decade out-of-date, but there is no attempt to see if the percentage of women inventors has changed in the interim. Nor has the author sought to determine whether the male–female divide in applications by Israelis and Israeli companies differs significantly from that in applications filed from abroad, but the country of applicant is on the form. The names of inventors in US applications are always given and readily available. This data were not examined. The theory that forcing companies to name inventors will somehow solve a problem could have been tested but wasn’t. The author does not to try to collect evidence, since it is not needed to show what she considers to be self-evident.
There is no attempt to compare the percentages of women inventors in different market sectors, or to correlate this with other countries. This is a shame, as the information is readily available on the Internet, and this is essential to drawing meaningful conclusions. There are companies such as Intel Israel, with women in senior management. It might be worth looking into whether such companies show different statistics than companies managed by men.
Salaries in hi-tech companies are generally higher than in other industries. Workers are regularly issued with stock options and sometimes offered 13th month salaries and other large bonuses. This can be seen as sharing the pie. In general, the raison d’être for companies is to create profit for their owners. Patent law serves an economic purpose. Companies provide inventors with bonuses and incentives to encourage creativity. They generally acknowledge the inventors unless there is a reason not to. The author has made no attempt to understand why some companies do not list the inventors’ names. If it made economic sense for companies to reward inventors more generously, then one suggests that, generally, companies would do so of their own volition. If this does not happen, there should be an attempt to analyse the underlying reasons.
Publicly traded companies allow anyone with capital to invest and share the profits and risks taken by the company. The model is an economic one. IP law is an economic development. The other justifications were not significant in the historic development of IP.
There is an implicit assumption that the model developed by Israeli universities would work in industry. This is not the case. Universities are non-profit organizations that are supported by public funding and academic researchers are employed to create knowledge. University employees are poorly paid compared to their industrial counterparts. However, they enjoy the benefit of tenure; they have the freedom to do what they like with their time. Promotion requires publishing papers, as per the old adage ‘publish or perish’. I consider that such papers should be owned by the educational establishment. The author has the moral right to have his name mentioned, but no more than that. I don’t think academic papers generally generate income for anyone other than publishers. Many non-scientific researchers do not have skills that are marketable outside the ivory tower. Applied scientists and engineers do. The academic model of royalty division is designed to keep highly employable scientists in academia and not industry. Industrial companies are profit-centred. They take risk in developing ideas, and will only do so if they can profit from doing so. If the inventor can take his or her invention elsewhere, and the company will simply be compensated for expenses incurred, it will not invest in research. Israel is the home of R&D facilities for many large international companies. If the local rules were different from those elsewhere in the world, these R&D facilities would fold.
Without cheaper energy, materials or labour, Israeli manufacturing can only compete with products from abroad if they have first-mover advantage and patent protection. The primary reason why I advise Israeli corporate clients to file patent applications in Israel is to prevent disgruntled employees from competing with them. One invests in patent applications long before one knows if a patent will be issued and if it will have commercial value. Companies consider taking this risk as long as the patent will be theirs. Applying Dr Shlomit-Yanisky Ravid’s model would probably wipe out Israeli industry.
For years, the USA considered international standardization that the rest of the world should adopt US practices. In the America Invents Act (AIA) the USA recently conformed its laws to those of the rest of the world, and now allows companies to apply for patents. The USA was big and powerful enough to do things differently for over 200 years, but one no longer has to file in the name of the inventor and then assign the application. Why should Israel adopt a system that even the USA has abandoned?
Israeli economist and Nobel Prize Laureate Professor Oman recently stated that he finds socialism attractive. His only problem with it is that it doesn’t work. Half the population of the world lived under Marxist regimes. The experiment was tried and failed in Russia, and has been evolved by the Chinese into a highly capitalistic system. Israelis wanting a fairer and more equitable division of resources are invited to join one of the few remaining non-privatized kibbutzim.
Dr Yanisky-Ravid’s assumption that a fairer distribution of profits between the employer and employee will increase the size of the pie is not based on any coherent logic. The current corporate patent system may not be perfect, but technology is advancing. Companies invest in new products and quality of life increases for all.
- © The Author(s) (2014). Published by Oxford University Press. All rights reserved.
Larry M Goldstein has published an interesting book called True Patent Value – Defining Value in Patents and Patent Portfolios which looks into how to value patents and patent portfolios. The examples chosen are from telecommunication patents. I am not sure to what extent the insights are relevant to other technologies, such as pharmaceutical patents, low tech, etc. Nevertheless, the book is a worthwhile read, particularly for inventors and investors (NPEs?) in the much traded and litigated field of telecommunication patents.
I have a peer reviewed Review of the book in the Journal of Intellectual Property Law & Practice, which may be read here.
The book itself is available from Amazon here for a mere $104.50, which isn’t a lot when compared to value of patents or the cost of obtaining them.
Intellectual Property Law in Israel is a 256 page soft back book published by Wolters Kluwer that was originally published as a monograph in the International Encyclopaedia of Laws/Intellectual Property Law.
The book has a general introduction consisting of a general background to Israel, and a historical background. It then has seven chapters, devoted respectively to Copyright and Neighboring Rights, Patents, Trademarks, Industrial Designs, Plant Variety Protection, Chip Protection and Unjust Enrichment. The layout of each chapter is well organized.
Partly reflecting the subject matter and the fact that this is a reference book not designed to be read from cover to cover, but also because the authors are not native English speakers and the grammar constructions used are both incorrect and arduous, the volume is as dry as a hand-baked matzo. It is, nevertheless, a convenient and easy to use reference book to note the coverage and main points of Intellectual Property law in Israel, and its title is thus appropriate.
The background is a background to Israel and Israeli law. It is not a background to IP in Israel. If it were, as I believe it should have been, it could usefully have included some statistics regarding publishing of books in Israel and the numbers of patents and trademarks filed in Israel, and worldwide by Israeli applicants. There is brief mention elsewhere of the enforceability of Israeli trademarks in the Palestinian semi-autonomous territories, but the background could have dealt with intellectual property in these areas more thoroughly, not least because there is significant counterfeiting going on these areas. The background does note that Israel has peace treaties with Egypt and Jordan. It does not refer to the informal boycott of Israeli companies that Jordan lawyers participate in. A brief discussion of intellectual property in Jewish Law would also have been welcome. Indeed, this has impacted Israel court decisions on occasion.
The sections on the different types of intellectual property law are comprehensive and well organized. Each chapter presents a portion that is short enough to be digestible. Nevertheless, the book is peppered with statements that are confusing. For example, and following the Israel Patent Law, we are informed that patent applications need titles in both Hebrew and English. There is, however, no statement to the effect that patent applications may be filed with the Israel patent office in English or Hebrew. One assumes that foreign applicants and their local counsel may be interested to know that patent applications may be filed in English and need not be translated into Hebrew. There is also a confusing statement that the fictitious man-of-the-art who knows everything but lacks creativity may actually be a group of fictitious persons. One wonders what this additional fiction adds. In the chapter on Trademark Law, after a general overview and a section on specific legislation, there is a section titled Trademark Jurisprudence. This section explains that Supreme Court decisions are binding precedent on the lower courts. It also explains that District courts are the court of first instance for trademark infringement and have appellate jurisdiction over the decisions of the registrar. Then we are informed that district court decisions have suggestive but not precedential value, which guide the magistrate’s courts. What is not explained however, is how magistrate courts, which don’t hear trademark disputes, are guided. It would be both useful and informative to note that despite the precedential or guiding nature of trademark decisions, since every case is considered on its merits, the caselaw provides arguments to each side, but it is next to impossible to anticipate how a specific case will be ruled.
Regarding Designs, as a quirk of the fact that Israel is still using the relevant section of the Patents and Design Law 1924, only local novelty is required. In 2008, the former registrar Dr Meir Noam interpreted this to include Internet publications whether viewed in Israel or not, to prevent parties from registering designs that are published in databases of foreign patent offices. The book takes the position that this is now the law, without noting that the relevant patent office circular is more akin to legislation by the registrar and is thus ultra vires and might well not stand up if challenged in court. In other cases, the authors note that various interpretations seem clear, despite never having been ruled on by the courts. I would agree with the authors that industrial designs are territorial, but former Jerusalem District Judge and current State Comptroller Shapira issued a worldwide injunction concerning unregistered designs for ceremonial challah cloths, and, given the dirth of design law from the courts, might have warranted a footnote. Actually, without specialist IP courts, there are a number of weird and wonderful rulings from the Israel District Courts that could be discussed to make the book more entertaining.
This volume is a four author publication written by an academic called Afiori and by attorneys at Gilat Bareket, one also being an Afiori, rasing the suspicion that two of the authors are probably related. The other two authors and Gilat and Bareket, the named partners of the litigation arm of the Reinhold Cohn group. The book is published by Wolters Kluwer. The entire volume, including index and selected bibliography is a mere 256 pages.
Noticeable in absentia is any reference in the selected bibliography to a volume with an almost identical title – Intellectual Property Law and Practice in Israel here that was written by Eran and Liss of a competing firm of litigators that was published last year by Oxford University Press. The Eran Liss book is 632 pages with 50 pages of appendices, and is thus thicker and more impressive on the shelf, if a little bulkier and heavy to carry around. Both books contain typos, unnecessary verbosity, wrong long words and poor grammar, but the Kluwer volume is, nevertheless, in better English.
The focus on practice in the Eran Liss book has lead to their copyright section relating to TV game-show formats which look as though they are a lawsuit waiting to happen. The Gilat, Bareket Anfori volume does not cover this area, possibly because thee are no relevant decisions.
As a reference work for foreign practitioners and as a revision tool for wannabee Israel Patent Attorneys prior to sitting the oral exam, this volume is preferable, since it is not burdened down with as much case-law. For reading on a plane to Israel, the fact that this volume weighs in at 386 g whereas the other book is over a kilogram, makes this more attractive. This book is also cheaper, although the Eran Liss book works out more economical per page. As a reference to caselaw for academics or for Israel practitioners involved in prosecution or litigation, the Eran Liss book is better. Their cover also includes flaps life fly-leaves extending from the front and back boards which can be used as pagemarks.. Very few people need both volumes, which raises questions as to whether this book is necessary, following the recent publication of the other one.
Intellectual Property Law i
4.0 Growth Company Guide
Although many of my clients are established companies, a large percentage are start-ups in various stages. Some require a first patent application to tempt venture capitalists. Sometimes they want their patent portfolio summarized for an audit before a second or third round of fundraising. Venture Capital Funds and industrial incubators sometimes come to me for a due diligence report on the IP portfolio of a company they are interested in. I don’t get involved in the contracts between investors and entrepreneurs, but occasionally entrepreneurs complain about dilution and other issues they have with funders.
In all fields, there is a specialist vocabulary and a basic knowledge of terms is important, for anyone even peripherally involved in fund-raising for start-ups.
Recently, an associate of mine from US Law firm Womble & Carlisle kindly gave me a copy of a book by one of their partners, Clinton Richardson. The book, called 4.0 Growth Company Guide, is an alphabetical arrangement of articles about different company funding concepts. The entries are more than definitions. They try to present the rationale behind the concept and what the consequences of using one funding model or another are to initial investors, entrepreneurs and second round funders.
Concepts like Milestones, Angels, Leverage, Clubbing, Safe Harbors, Downside ISOs, leverage and buyout are explained in friendly, factual, neutral terms. The book seems like a handy reference for anyone getting involved in start-ups.
The book has been around since 1987. It is now in its fourth edition.
ISDN 978-0-6151-6409-0, the price on the jacket is $79.50. Not bad for 445 pages of reference material.
When I first saw this book I suspected from its thickness (36 mm (1 15/32″ thick) that the authors had resorted to the well known strategy of adding appendices such as copies of the Israel Patent Law, Trademark Regulations, Copyright Ordinance and the like. This is not the case. The book runs to 632 pages of analysis, with a further 50 pages taken up with a table of cases and an index. There is no gratuitous padding. The book is simply a fair attempt to provide a detailed overview of IP in Israel and its length reflects its comprehensiveness.
As a thorough overview of intellectual property law in Israel, the book succeeds. It covers patents, copyrights, trademarks and designs, unjust enrichment, trade secrets, passing off and related rights. It is the result of significant research by the authors, and though one can quibble with the odd opinion expressed, the book is authoritative. It is certainly a worthwhile addition to the library of any practicing Israeli patent attorney or IP lawyer.
Unfortunately, the readability of the book suffers from the lack of professional editing and the writing style provides constant reminders that the authors are not native English speakers. Paragraphs are long-winded and repetitive. Sentence syntax reminds one that the authors are used to writing in Hebrew. Sometimes, such as where copyright infringement by DJs at ‘wedding hauls’ is discussed, the typos are amusing. Generally, they are simply tiresome. I suspect that tighter writing could have slimmed down the book, shortened paragraphs and made it easier to comprehend without compromising on its comprehensiveness. That said, when allowing for the fact that the authors are not writing in their native language, the standard of the English is impressive. It is certainly better than my Hebrew. Nevertheless, the book is a little tedious and difficult to read because of language issues, and it’s a shame.
As would be expected from a legal text, judicial doctrines are discussed with reference to the case-law. Since the cases referred to are rarely available in English, I believe that the book would have been enhanced by an appendix abstracting the details of each case and providing a one page overview covering the specific issues and the legal significance. The cases could be arranged by subject or chronologically, with reference keys to facilitate the reader to find precedents of interest. I note that Machshavot who publish such overviews of case-law (in Hebrew) do not have a volume covering IP decisions. Although such an appendix would make a long reference work even longer, I think this would be a worthwhile addition, and would probably result in the thematic sections being shortened and would minimize repetition.
I suspect that the authors, who are both attorneys-in-law, in choosing to refer to follow the US convention and refer to licensed Israel patent attorneys as ‘patent agents’ will not endear themselves to their fellow professionals with technical backgrounds who universally and correctly translate the Hebrew term as Patent Attorney and refer to themselves as such. The training in IP law that Israel Patent Attorneys undergo includes two-year mentoring which is twice as long as that of law students. Both the written and the oral exams are difficult and the oral exam in particular, has a very low pass rate, particularly when considering the academic qualifications of the participants. Indeed I suspect that this book will be very widely used by trainee patent attorneys preparing for the Israel Patent Office oral exam.
The book, including it’s cover, weighs in at 1022 grams. It’s an attractive volume.
Intellectual Property Law and Practice in Israel by Eran Liss and Dan Adin, Oxford University Press May 2012 – ISBN: 9780199917419 (13-digit) ISBN: 0199917418 (10-digit) – $225 from the publishers.
The Essentials of Patent Claim Drafting is a straightforward guide to drafting claims, aimed at the beginner. To the extent that one can learn to draft claims from a book, this is not a bad tutorial.
As with many such works, it is strongly biased to mechanical type drafting. The claim style is a little long-winded and pedantic for my taste. The focus is on USPTO requirements, but nevertheless, in my opinion, a chapter dedicated to the differences in US approach, from say, that of the EPO, would be a valuable addition.
The focus is on obtaining patents. Since ultimately a patent might be litigated, there should perhaps be some discussion on claim construing in Marksman hearings and the need to make sure that terms cannot be misinterpreted.
Nevertheless, a useful guide for beginners.
- Paperback: 224 pages
- Publisher: Oxford University Press, USA (November 17, 2011)
- Language: English
- ISBN-10: 0199856354
- ISBN-13: 978-0199856350
Rules for Patent Drafting
There are many books that relate to claim drafting. Rules of Patent Drafting by Joseph Root is different in that it relates to drafting patent specifications, not merely the claims. Its premise is that when a patent is litigated, terms not mentioned in the claims but used in the specification may be read into the claims by the court during claim construction in the so-called Marksman Hearings, so it is important to carefully consider the specification as a whole when drafting applications, and not merely the claim
Instead of moaning about what the courts do to patent claim interpretation in Marksman hearings, the book suggests internalizing the court’s approach and reconsidering one’s patent drafting, and provides rules for so doing. In particular, the book suggests writing longer and more detailed disclosures, while taking care not to describe optional features as necessary ones, of course.s. The book implicitly rejects the idea propagated by do-it-yourself patent guides, that the inventor can write his own application and simply have a patent agent or attorney draft the claims.
The contents and insights are refreshingly different from the type of thing that seems to be rehashed in books aimed at beginners. Furthermore, the author, Joseph Root, supports his contentions and illustrates his approach with reference to Federal Circuit Court of Appeal decisions.
Unlike most books on claim drafting that seem to focus on mechanical or electronic systems, the author relates to both the predictable and the unpredictable arts, and instead of simply saying that they are no longer popular, doesn’t shy from tackling means claiming in a thorough manner.
What is particularly refreshing though, is the style. The author emphasizes his points with similes and metaphors taken from an impressive range of books, films, and TV series. Despite thoroughly addressing weighty subject matter, the book is not a heavy read.
Design Law European Union and United States of America, Uma Suthersanen, Sweet & Maxwell, 2009
http://jiplp.oxfordjournals.org/pdfThe title of this book, Design Law: European Union and United States of America is somewhat of a misnomer. Despite being a relatively thin 276 page volume, it covers the protection of designs more widely that simply describing the sui generis design law in the two jurisdictions. The book also covers the protection of objects under copyright, trademark law, unjust enrichment and unregistered design rights. This is, therefore, a useful reference work, as a practitioner would be likely to consider alternative forms of protection and causes of action, particularly if the relevant sui generis design law were inapplicable. For example, if the object to be protected was specifically excluded, or if no design application had been registered in a timely manner but the article was, nevertheless being copied; or if a design had been registered for the object but the right had expired.
or in text format: http://jiplp.oxfordjournals.org/text
Theasurus of Claim Construction
I was very excited when Stuart Soffer, a Non-Resident Fellow, Stanford Law School Center for Internet and Society informed me of his forthcoming book, “Thesaurus of Claim Construction” which is co-authored with Robert C. Kahrl, a long term partner at Jones Day. Such a book is long overdue.
The nice people at Oxford University Press kindly sent me a copy.
The work is mostly an alphabetic arrangement of words and phrases that have been construed in the course of patent litigation and includes over 7000 entries. Since such constructions are, by definition, rulings regarding the meaning of the word or phrase in the specific context. Consequently such constructions are not binding precedents and aren’t even much use as an indication of what a phrase would be interpreted to mean in another claim construction. Nevertheless, the definitions do show what the words could be taken to mean.
The range of words and phrases that have been the subject of claim construction may be surprising to some. Chief Judge Markey in Senmed vs. Richard Allan Medical Industries, Inc 888 F.2d 8215, 819 n. 8 (1989) commented on a construction of the word ‘on’ in a claim, that;
“lawyers may create a dispute about any word”.
Chapter 1, ‘How to use this book’ is well worth reading, but I rarely bother with user manuals and certainly have no intention to review a user manual for a book, so will move on.
Chapter 2, titled ‘Outline of the Law of Claim Construction’ is a must read for litigators and is valuable reading for practitioners drafting claims. Personally, I believe that expensive disputes could be avoided by using words more carefully, preferably in accordance with their regular meanings and with definitions in the specification. Nevertheless, it is valuable to review the hierarchy between dictionary definitions, the specification, extraneous sources and the file wrapper. There are also differences in how the preamble, transitional phrases and limiting clauses are interpreted. It is useful to remember that the correct construction is what the word meant at the time of filing, apart from the cases where limitations crept in during prosecution.
The lion’s share of the book is devoted to Chapter 3, an alphabetical list of “Simple terms” that have been construed at some time or other, with indications of which definition and which party prevailed and which constructions were rejected. The entries are referenced with the details of the court dockets for further reference.
The list starts with a construction of the symbol %, and reminds us that compositions should be given as weight percent, or volume percent, and that it should be clear if the percentage is of the total composition, or of only part. The next words to be examined are ‘a’ and ‘the’. One can understand why a term like ‘AC energy’ required construction as it is ambiguous, since current is measured in amps and energy in joules, but who would have the foresight to define whether ‘AC wave’ implies the wave created by a varying current over time, or whether the direction of the current has to keep reversing? Likewise the effect of adding words like ‘about’ in a claimed range becomes clearer on reviewing the way such claims are construed.
It will be appreciated that words beginning with letters B through Z have also been construed and this review is not intended to comment comprehensively on all the entries. One can amuse oneself by opening randomly and seeing what terms have been discussed though. For instance, in a particularly adolescent moment I discovered how the court interpreted the term nipple cover.
In Allure Home Creations vs. Zak, the term ‘second vessel’ was interpreted to mean ‘a preformed sealed vessel enclosing a first liquid and an insoluble structure floating on the first liquid. One presumes, therefore, that the context had nothing to do with first and second vessels relating to reheating foodstuffs on the Jewish Sabbath without violating the Biblical prohibition of cooking – tha is unless the claimed invention related to chicken soup with kneidlach (matzo balls).
One of my esteemed Israeli competitors has the endearing habit of defining the word plurality to mean ‘one or more’ in his specifications. Native English speakers working for him have been unable to convince him that this is simply wrong. I was pleased, therefore to see that the many constructions of the word plurality all take the word to mean at least two. Nevertheless, one wonders how his claims would be construed.
The book relates to litigation in the US, but, since the US is an important market, and because judges everywhere seem to have little scientific aptitude and lawyers everywhere play semantic games, the book will appeal to an international audience.
In addition to giving the history of Marksman there is also a valuable chapter on ‘means + function’ claims and how they are construed. Apart from guiding litigators, the book may help claim drafting, should help designing around, and will prove invaluable to practitioners required to express opinions about the work of others. It is also an impressive addition to one’s shelf of dictionaries and reference books, since it has approximately similar dimensions to standard editions of Roget’s prior art.
Thesaurus of Claim Construction, Robert C Kahrl and Stuart B. Soffer, Oxford University Press 2011. Well worth the $295 asking price.
Innovation, Intellectual Property, and Economic Growth by Christine Greenhalgh and Mark Rogers (Jan 24, 2010)
Reviewed by Michael Factor in the Journal of Intellectual Property Law & Practice 2011; doi: 10.1093/jiplp/jpq211
The knife-edge on which the intellectual property law tries to balance is that of defining enough private property rights to preserve adequate incentives for innovation while avoiding the gift of excessive monopoly power, which will lead to socially inefficient exploitation of that creation.
This book analyses the effect of intellectual property rights (IPRs) on the market. While certainly capitalists, the authors view Milton’s free market as a system that is inherently inefficient at wealth maximization and prone to duplication of effort and wastage. The market thus needs intervention and regulation to optimize the usage of resources and to maximize progress.
The book takes the position that IPRs, by granting property rights over intangible assets, moderate the forces of the market and promote progress. The optimal periods of protection for patents and copyright are those that find the correct balance between the creator’s rights and the public domain or the free market, to encourage development and progress. The difference between the protection given by …[Full Text of this Article]
”Winning the Patent Damages case, A litigator’s Guide to Economic Models and Other Damage Strategies” by Richard F Cauley, Oxford University Press, 2008 is a handy 155 page flexible covered book that covers this esoteric field.
Cauley believes that the parties in patent litigation too often concern themselves with proving or disproving infringment and do not put enough attention into calculating and proving the scope of the damages by vigorously pursuing a hypothetic negotiation to work out what would reasonably have been agreed by the parties.
The book is well written and may well be a good guide to how to litigate cases of this (more)
Copyright in Jewish Law – a book review
The Hebrew title of the book is titled creator’s rights (or privileges) in Jewish Law, using the term Zechuyot haYotzer. The English version renders the term as copyright. Although the book focuses on copyright issues, it does also relate, albeit briefly, to patents, trademarks and to the moral right of an author to be recognized as such. All these are referred to as copyright. This is somewhat confusing as they are different types of intellectual property that serve different purposes, protect different types of subject matter and for different time periods. Thus the term intellectual property right or IPR would perhaps be a more useful term.
The book raises more questions than answers. In the forward the book defines copyright as the restriction against duplicating an idea or an object. It is however axiomatic to secular copyright law that ideas per se are not protectable, but rather they need to be fixed in some manner, and objects are usually protected by design rights or patents.
The introduction and overview explain that the majority of Rabbinic authorities consider ownership over intangibles as being of Biblical origin. However…(more)
Patents for Chemicals, Pharmaceuticals, and Biotechnology, fundamentals of Global Law, Practice and Strategy
Written by senior IP counsel at Novartis, Philip Grubb and Peter Thomsen, both also lecturers in academia, this book is a well-written authoritative overview of patent protection for pharmaceuticals, chemistry and genetics that is a “must read” for practitioners and industrialists in this area.
Whilst it is clear that the authors are biased towards the drug development industry, the genetic viewpoint is covered as well and there is an attempt to be fair. The authors acknowledge that most genetic challenges are aimed at secondary patents that attempt to prolong the period of protection and there is even an admission that sometimes patent applications are filed where it is difficult to argue inventive step or even novelty, and the pejorative term evergreening is used to condemn such activities that bring the drug development industry into disrepute.
The book covers the legislative development and main case-law, comparing and contrasting between the practice in the UK, US, Japan and Continental Europe, particularly Germany and (more)
The Implementation game – The TRIPS Agreement and the Global Politics of Intellectual Property Reform in Developing Countries by Carolyn Deere is an analysis of how different developing countries implemented their TRIPS agreements. A nicely bound, 342 page book with 68 pages of biography, this is a library reference work in every sense of the word.
The book is a thorough analysis of an important topic. The subject matter is, however, somewhat dry, and my first impressions were that whereas no Law, International Relations or Economics library should be without it, few busy patent practitioners would find a book about implementation and enforcement in the third world sufficiently pressing to read the material. (more)
Intellectual Property Culture by Eric M. Dobrusin and Ronald A. Krasnow, is a kind of handbook for actual and aspiring in-house IP managers. Although it does not assume knowledge of IP, and defines trade secrets, patents, and other basic concepts, the book is not merely for new-comers, but includes much that licensed patent agents or patent attorneys will find interesting, particularly those that switch from working for service providing law firms to becoming in-house counsel.
Rather than to teach how to draft patents, the book teaches how to create an IP culture for a corporation. Infringement and competitors IP is discussed before how to plan a patent portfolio. Trade secrets and confidentiality are discussed before patents.
There are some very useful tips regarding (more)
The Invisible Edge is a book by Mark Blaxill and Ralph Eckhardt, two Boston Consulting Group Economists, that tries to explain how Intellectual Property can be considered as assets that have very real effects on business valuations.
Starting with an analysis of how materials and design can improve sports performance, the book argues that the Industrial Revolution would not have happened if James Watt had not had a patent on his steam engine design that enabled him to attract investment capital. The book makes a compelling argument that economic growth is fueled by intellectual property and that by considering patents and trademarks as expenses in the balance sheet and profit and loss account instead of as assets, Intellectual property is generally undervalued. (more)
This book was written by a patent attorney in private practice who had previously worked for over 30 years as a patent attorney in-house at Bell Laboratories (AT&T and then Lucent).
The book tackles the problem of abstracting the inventive concept from a technology and claiming it as widely as possible, with minimal limitations. It is not a guide to passing the US Patent Bar, but is rather aimed at practicing attorneys wishing to hone their skills.
There is a good analysis of the pros and cons of means-plus-function claiming as opposed to claiming structural components. The book demonstrates how claims can be tightened, and how to avoid unnecessary limitations like descriptive labels in claims, modifiers, unnecessary elements that are part of an embodiment but not part of the invention, advantages and uses – i.e. material that belongs in the description and perhaps has a place in dependent claims.
The need for the claims to define the invention, not to explain it is stressed, and why words such as for… are best avoided (more)
To me, the significance of the book is not so much what it says, but that it says it in Hebrew. There is, therefore, a reasonably chance that it will have an influence on Israeli policy makers. Briefly, the book explains the differences between academia and industry, and why academics should have State support whilst doing basic research, yet should be able to benefit from their inventions.
The book argues its points well. This is not surprising.The author, Professor Messer-Yaron is the Dean of the Open University and a former Director of Ramot, the Technology Transfer Company of Tel Aviv University. Nevertheless, the book is more of a polemic than a balanced analysis. Although isolated examples are given to support arguments raised there is little supporting statistical evidence included.
It is significant that the Israeli model of rewards to academic inventors has been adopted elsewhere. The Baye Dohl Act and subsequent experience in the US does show that providing incentives to academics to patent their research does oil the wheels of progress.
From time to time, Israeli politicians and liberal arts professors do try to suggest more equitable solutions,than providing academic inventors with a share of the royalties generated by their inventions. Whether motivated by genuine Marxist convictions or, as we suspect, by envy, Whilst this is the situation, an easy accessible, short and authoritative argument showing the benefits of the system is required and this book provides it.
The Capitalism of Knowledge, by Chaggit Messer-Yaron The Broadcasted University (Galei Zahal, 2008)