Patent Law Essentials: A Concise Guide

by Alan L. Durham

This consise, up-to-date survey of U.S. patent law uses examples, many from actual cases, to explain the various aspects of the patent system, including issues of patent validity, infringement, the application process, and litigation. Although many large multi-volume patent treatises are already available, this book will serve as a useful overview or starting point for further research. Patent claim interpretation, equivalence, prior art, and the extension of patent protection to non-traditional subject matter such as computer software are covered in detail. Appendixes contain sample U.S. patents.

Genres: Nonfiction, Law

Hardcover

First published September 30, 2004

Reviews

[Rex · Rating 4 out of 5]

This is the first book I’ve read on patent law, so I’m not qualified to refute anything Durham presented or to compare it to other introductory books. But, in my view, Durham does an admirable job painting a broad picture of the technical aspects of patent law.

The book begins with a roadmap outlining the historical basis and basic legal texts of patent law. It then distinguishes patents from other forms of intellectual property. Next Durham introduces actual patents, explaining the format and technical language (actual patents included in the back).

The rest of the book deals with patent prosecution, ownership, claim interpretation, conditions of patentability, enforceability defenses, infringement, litigation, and a couple of other topics.

Here are my notes:

Historical origins:
1. 1624--Statute of Monopolies abolished monarch’s power to grant exclusive rights
2. Jefferson initially opposed to the idea of patents; later changes his mind
3. Article I section 8: “The Congress shall have power…To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries”

Patentability: Definitely not “anything under the sun that is made by man” (Diamond v. Chakrabarty, 1980). Cannot patent abstract ideas, principles of nature, living organisms, artistic/literary creations, and printed matter. Method of doing business is questionable (The edition I read is old (1999). I’m anxiously awaiting the Bilski decision).

Patent Prosecution: apply for a patent from USPTO; continuation = same disclosure with new claims, divisional application = examiner splits one application into more than one application, interference proceeding = determine who has priority, reissue = applicant fixes error in patent, reexamination = reconsider validity of issued patent

Ownership: Can be someone beside inventor (assigned), the assignor may grant licenses, legal estoppel = cannot get a second patent on something embodied in the first patent after licensing the first patent; the situation is more murky when dealing with industry standards or implied licenses

Claim interpretation: use plain meaning unless other meaning specified, consult prosecution history and compare to other claims; patents should be read in a way the preserves validity if possible

Conditions of patentability: utility, definite, enable practice, disclose best mode, novel; issued patents are presumed to be valid, assignor estoppel = inventor cannot claim that "invention" he made is invalid; invention = conception and reduce to practice, obviousness is judged from perspective of “person of ordinary skill in the art”, there are “secondary considerations for obviousness” in difficult cases, the “on sale bar” may prevent a company from obtaining a patent because filed one year after being on “sale”, no double patenting

Enforceability defenses: Inequitable conduct = dishonesty in the patent application process, Misuse = patent owner leverages advantage past intended boundaries of patent protection

Infringement: U.S. patents limited to U.S., intentions of infringer are irrelevant, liability can be given to indirect infringers, some experimental use is exempted from infringement; The doctrine of equivalents was quite complex and it seemed like any decision is rather subjective.

Litigation: All patents cases are in federal courts, Declaratory judgment = possible infringer brings files suit to prevent ambiguity, burden of proof is “preponderance of evidence”, questions of law are decided by judges, questions of facts by juries, preliminary injunction = accused infringer must stop selling product until case is decided, summary judgment = judge prevents easy cases from going to trial

Remedies: Often difficult to calculate, at least recover lost profits, reasonable royalty using “Georgia-Pacific” factors, willful infringement--up to triple damages

Durham ends the book by commenting on the controversy of patenting computer programs. Overall, I thought the book was a good introduction. The book does not comment extensively on controversies, but does point out some of the major ones.

[Kin Guan · Rating 4 out of 5]

As the title suggests, it is a guide which introduces and summarizes the essential knowledge in patent law. The author claims in the preface, "It would be accessible enough, I hoped, to introduce non-lawyers to the “rules of the game,” while sophisticated enough to provide attorneys a useful desk reference—a starting place, at least, for further research." I would say it served the purpose.

[Victoria · Rating 5 out of 5]

This is such a useful book for anyone who wants to understand patent law. The language is very clear, simplistic, and not dry. There are copies of actual patents in the back and each aspect of the patent is explained. An essential for anyone who plans to go into the field.