Book Review: Fundamentals of Claim Drafting

Paul Cole is a European patent attorney as well as a regular Patently-O reader. I have been planning to write a short review for some-time of his book — Fundamentals of Patent Drafting. I was prompted today when another reader recommended the book.

Given Paul’s background, Fundamentals has a focus on European (and UK) patent drafting.  However, the author is also quite familiar with US patent laws and blends-in US topics as well — making the book a good resource for US attorneys who are managing foreign prosecution or who are drafting patents that will eventually be filed in Europe.  There is also an interesting discussion of windsurfing technology.

Book price: £25.00 (plus postage for outside the UK: £5.60 to Europe or £13.50 to outside Europe) from CIPA

18 thoughts on “Book Review: Fundamentals of Claim Drafting

  1. Maxdrei, re an european blog animated by a EPO examiner:
    It would be difficult to keep it anonymous, and/or not to infringe our statuatory obligation.
    Article16(1) ServRegs: staff must refrain from “any act and, in particular, any public expression of opinion which may reflect on the dignity of their office”(1) .

    As our president newly restated it:
    …It goes without saying that for EPO staff to contribute to public awareness about complex patent issues is a good thing. Many highly committed staff devote time and energy, even in their leisure hours, to making such contributions. This is recognised and appreciated by the Office and the wider world.

    Staff must also realise however that any individual expression of opinion in a public forum that openly attacks a decision taken by the Office or the Organisation (e.g. the Administrative Council) is by definition detrimental to the dignity of their office. Individual staff must refrain from such public criticism, either orally or in writing, because it is incompatible with Article16(1) ServRegs.

  2. MAX ….

    once again …

    Is there an English translation of the German court opinion on this topic or an english language legal discussion that you know of, online?

  3. Alun,it’s all about Presumption of validity. 20 year guys have it cos they’ve been examined prior to issue. 10 year oiks have it not, cos they’re unexamined rights. So, if you assert a 10 year chappie, the court might baulk at enjoining, till the DE PTO has franked validity.

  4. Re European IP blogs, IP Kat is great except they have flooded my inbox by sending me something like three updates per day! Ouch!

  5. I was reading the blurb on the DPMA web site quite recently, and according to my shaky knowledge of German I got the impression that a Gebrauchsmuster is valid for 3 years without examination and 10 years if you opt to have it examined. Presumably(?) to get a 10 year term you now have to pass the same standard of obviousness as a normal 20 year term Patentschrift, and presumably(?) if you opt for a 3 year term a putative infringer must go to court if they can’t wait for it to expire. Ist das richtig, Max?

  6. Max, thank you for the clarification.

    Is there an English translation of the German court opinion on this topic or an english language legal discussion that you know of, online?

  7. John, Germany used to think that it could set two different levels of obviousness, one for 10 year patents and a highher level commensurate with a 20 year monopoly. Brits kept asking: how do you do that? Isn’t obviousness a Yes/No binary issue? Now, the German Supreme Court just issued a decision announcing that the level of inventive step needed for a 20 year patent ain’t any different from one for a 10 year patent. Erfinderische Schritt is the same as Erfinderische Taetigkeit, despite the different wording in the Statute. This rationalisation was prompted by competition between UK and Germany, to find the most robust lines of patent law, within the framework of the European Patent Convention. Each country has learned from the other.

  8. Max Drei stated … in response to a question about “HOW WOULD YOU TEST FOR OBVIOUSNESS?”
    that
    “Germany has 20 year patents with a tough obviousness standard and 10 year patents with a lower obviousness hurdle. ”

    So I asked Max to clarify what is a ‘tough obviousness standard’ and what is a ‘lower obviousness hurdle’ in Germany. But I did not seem to get an answer to my question. Only that there is a quick review process for short term patents. I must be missing something.

  9. Normski, we think alike. As to novelty vs obviousness, I like to point out that you don’t need a law of novelty to block stuff not worthy of a patent. Obviousness alone will do for that. What you need novelty for is to mediate between competing applicants, all of whom get on file before any of them publishes. Not all of these wriggling spermia can have a monopoly so you give the monopoly to the one who is first to the PTO with a disclosure that enables over the full width of the claim. The later filers are welcome to come away in triumph with all they have that is novel over Number One filer. That’s how it is under the EPC (and ever more of the world outside USA) and I want no wimping out of that crystal clear law, for the sake of a comfort blanket called “harmony” with US patent law. USA should concentrate on optimising its exceptional patent law, and leave the rest of the world with the uniform superb clarity of the EPC system, that was devised by England and Germany in the days before patent law became such a political hot potato.

  10. @Babel Boy

    The German system is a patent/utility model system which lots of countries have. In Germany, one can apply for a patent (20 yr term) or for a Gebrauchsmuster (utility model) (10 yr term). Other euro countries also have patent/utility model systems, as do Japan and Australia (a ‘standard’ patent giving 20 yrs and an oddly named ‘innovation’ patent giving 8 yrs).

    In most (perhaps all, I don’t know) of these systems the utility model is only examined to check it meets the formal requirements not the substantive ones. e.g. in Oz, the innovation patent is simply registered, but cannot subsequently be asserted in court until it has undergone a post-registration examination. In other words, only contested/infringed innovation patents are ever examined. The obviousness standard is lower than for the standard patent.

    The thinking behind these systems is similar to that expressed by you, i.e. to provide some protection for minor advances but to reserve full patent protection for more significant advances.

    Personally, I hate utility models. In my opinion, something is either obvious or it is not. The question is binary, ‘would it have been obvious at the p.d. to a person skilled in the art?’. If not, then no protection should be afforded. The public has a right to do that which is known (hence the need for novelty) and also surely that which is simply a minor variant on that which is known and which would be arrived at by the POSITA using his common general knowledge (hence the need for non-obviousness).

  11. Here in Europe it’s evening, and I’m just back home from the pub, so excuse the frank tone. John; Germany just discovered that you can’t set different levels of obviousness. Either it’s obvious. Or it isn’t. You apply for a 20 year patent or a 10 year patent. Applicant chooses. If you ask for a 20 year thing you submit to pre-issue exam on the merits. If you ask for 10 you get your grant cert forthwith, but it might get revoked later, if somebody disputes its validity.
    Babel Boy, in the real world, it’s the incremental improvements, tons of them, in aggregate, that the big corporate users of the world’s patent system are concerned with. Inevitably, the litigations are going to be about marginal cases, on the border of what is obvious. One builds thickets of patents. Fact. Governments and judges have a duty to set the Rules of the Game, to mediate between patent owners and patent “infringers”, because Monday’s corporate patent owner is Tuesday’s “infringing” manufacturer (although one actually infringes ONLY when one is inside a claim that survives attacks on its validity). Fact. My proposal: let’s have a patent system that serves the needs of industry rather than the incomes of lawyers, shall we?

  12. As a London-based reader of Patently-O, which is truly invaluable for the non-lawyer who finds himself regularly embroiled in US patent law (I am a chemist who covers global healthcare for an investment bank), I would suggest IPEG (link to ipgeek.blogspot.com). Not sure if there are any UK-specific blogs, but this one covers most of interest. Keep up the (very) good work, Dennis!

  13. Max
    Whoa — I didn’t realize there was a patent system with variable length patents. As I’ve said in prior comments, this seems such a sane solution to the obviousness dilemma. The big leaps forward (which are generally easier to appreciate as such) should get longer protection than the (often idiotic) increments. A subjective decision is still required as to who crosses the 10 year/20 year line, and I’m not sure examiners are qualified to make some of those calls since they often are not persons skilled in the precise art in question, but rewarding “smaller innovations” with “smaller patents” just makes sense to me. Does it work in Germany?

  14. Just an ordinary inventor asks:
    “Dear Max:
    Regarding the question of the day, “HOW WOULD YOU TEST FOR OBVIOUSNESS?,” would you agree that subjectiveness cannot be part of the answer?”

    Max Drei writes:
    “What I don’t like is a system that leaves it uncertain whether a claim goes down on obviousness till the appeal court rules.

    “Germany has 20 year patents with a tough obviousness standard and 10 year patents with a lower obviousness hurdle. ”

    So I ask Max to clarify what is a ‘tough obviousness standard’ and what is a ‘lower obviousness hurdle’ in Germany

  15. Thank you JOI. What I don’t like is a system that leaves it uncertain whether a claim goes down on obviousness till the appeal court rules. I’m not a litigator, and don’t need litigation to gather a living income, so I think litigation should be a last resort. Here in civil law Germany, however, litigation is almost a first resort, and almost like alternative dispute resolution. We will at the outset of a dispute put the issue to “Uncle Judge” and see what he thinks. We can use his (first instance) decision as a basis to negotiate a settlement, then go to the second instance if we can’t agree. Litigation between Germans (and everywhere else in the civil law world, Japan etc) is not so adversarial as in USA. Now that England belongs to civil law continental Europe, even English civil litigation is being squeezed by civil law continental Europe. For me, whether something is or is not obvious is a matter of fact, not law, but SCOTUS in KSR defines it as a matter of law, just like the Germans. That’s very significant when it comes to finding a basis for an appeal. In England, it is almost always futile to appeal on the fact of obviousness, because courts of appeal don’t normally re-find the facts of the case, so patent litigation usually ends at the first instance (If it ever does go to full trial. 95% of English cases settle anyway during the fact-finding run up to trial). I think SCOTUS just guaranteed that every piece of US patent litigation will have to go to the CAFC for a definitive determination what is obvious. Good for the litigators, eh? BTW, Germany has 20 year patents with a tough obviousness standard and 10 year patents with a lower obviousness hurdle. Germany has at last realised what to me was clear ages ago, that there is only one level of obviousness, namely, yes or no.

  16. Dear Max:

    I don’t always agree with your posted views — I suspect we have different subjective objectives — but regarding your comments about this blog, I couldn’t agree more. I’ve also noticed, as you point out, that posters on PatentlyO tend to offer up their subjective views to affect opinions in the IP community and or for debate with others who hold differing views consistent with their respective subjective objective.

    The IP playing field is, of course, extremely adversarial, with a footing in the anti-trust arena. I’ve heard our chosen IP field referred to as the sport of kings; I view it as a most serious and potentially productive profession, and I am proud to participate in this prestigious playing field. As an inventor by trade, my goal is to be as phenomenal a client as humanly possible. To me, as an ambitious inventor, it is all about omnipotent, omnipresent & omniscient attorneys who would prosecute, preserve and press my patents.

    Regarding the question of the day, “HOW WOULD YOU TEST FOR OBVIOUSNESS?,” would you agree that subjectiveness cannot be part of the answer?

  17. The USA blog sites have lists of other blogs. Suggest you try them. That’s what I do. Try the IPKat, or Axel Horns. I don’t know anything else that comes close to Dennis Crouch, when you want lively, intelligent and opinionated debate. One reason might be that contributors to Dennis fondly suppose that what they write might have an effect, or that they will get a counterblast. The IPKat is provocative and ought to enjoy equal success, but still doesn’t. Not so many active opinionated patent lawyers in Europe, I fancy. The nice thing about this blog is that contributors are mostly real users of the patent system, not just academics scoring points. Actually, I enjoy the “Just’n'Examiner” blog by somebody at the USPTO. Shame there isn’t an EPO counterpart. EPO Examiners might have more time than EPO attorneys to keep such a Euro blog lively.

  18. Does anyone know of any good English language patent blogs dealing with practice in Europe or Japan?

Comments are closed.