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Intellectual Property Law

: IPKat

The requirement for an invention

By Johanna Gibson, David Pearce, Jeremy Phillips and Ilanah Simon.

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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.

According to the book's web-blurb

"A central theme of the book is that the requirement for an invention, properly construed, sets the boundaries of the patent system in two ways. The first is by defining the categories of subject matter capable of supporting a patent, and the second is by restricting the protection conferred by a patent to individual subject matter conceived qua invention [the Kat wonders whether a good case can be made for trying this the other way round, arguing that it's the acceptance of certain categories of subject matter that shapes the requirement for an invention ...]. In serving these functions, the requirement for an invention helps to fulfil the public benefit objectives of the patent system by mediating the balance struck by patents between individual patentees and the public.

This book offers an analysis of legal conceptions of the invention in UK patent law and their development from before the first patent legislation of 1623 through the patent system's recent phase of Europeanisation [This is a remarkable conceptual and functional evolution. If we didn't know what the system looks like today, it would be impossible to predict it from its earliest sources]. It includes a detailed study of the contemporary (EPC) requirement for an invention and its construction by the European Patent Office, and an analysis of the legal and policy issues which that construction raises. It also places the UK and EPC law in its interpretive context, including its international statutory context, and offers a detailed account of international law-making in the field of patents" [The Kat thinks international patent law-making would make a great multi-party board game. The only problem is working out who the winners are ...].

This book unashamedly appeals to academics and patent law makers -- but that's no excuse for not reading. The practitioner will find a surprising amount of case law, discussed and deployed effectively in its context. And while the undergraduate IP student may find it hard to squeeze a thorough read of it into the crowded schedule of coursework and revision commitments, the IP research candidate will be able to stand on the author's shoulders, as it were, and view the horizon of PhD topics from an altogether higher standpoint.

Dr Pila is to be congratulated for her diligent research and lucid writing. Although this Kat has lived through the past 30 years or so of patent reform, at national, regional and international level, and reckoned he had a fairly good grasp of its evolution over that period, he had not fully appreciated how much went on behind the scenes, particularly in the conferences leading up to 1 June 1978 -- Day One of the new order of the universe when the European Patent Office opened its doors to business.

Bibliographic data: xliv + 351 pages. ISBN 978-0-19-929694-1. Hardback, price Ł60. Rupture factor: low. Web page here.

Full post as published by IPKat on June 15, 2010 (boomark / email).