Book Review: Introduction to Patent Law for Non-Lawyers

NotSoObviousby Dennis Crouch

Jeff Schox recently sent me a copy of his new book on patent law: Not So Obvious: An Introduction to Patent Law and Strategy. Schox uses the $39 paperback for the patent class he teaches to Stanford engineering students. The book is written in plain language and is clearly designed to be read by engineers wanting a first-cut understanding of the patent system and its purpose. In addition to patentability and infringement, the book also includes a nice chapter on inventorship and ownership rights. 

In the past, I have often recommended the "Patent it Yourself " book by David Pressman to inventors and others wanting to better understand the process. The problem with Pressman's book is that it has become so lengthy (596 pages) that it is no longer an easy resource for those more casually involved in the system.  Schox book likely fills that gap. (PIY is still a great resource for those more deeply involved in prosecution.)

Do others have recommendations of patent law resources for inventors who want to better understand the system without actually becoming patent agents? 

32 thoughts on “Book Review: Introduction to Patent Law for Non-Lawyers

  1. Confused, I would argue that until the translation is filed, the claimed benefit remains inchoate. This should be true for both the benefit of the patent owner and with respect to whether it is entitled to the benefit for prior art purposes.

    Since this is virgin teritory, there is no case law on point.

  2. Under the new law, should a U.S. application be entitled to a foreign priority date if no literal translation is provided of the foreign priority document? Under current practice, a translation need be filed only to get around a rejection based on an intervening prior art reference. The answer to this question affects whether the new law will apply to the U.S. application in the first instance.
    (This is a slightly different question from above asking whether a reference that is a patent or published application should be effective as of its priority date only if a literal translation is provided.)

  3. The best I have seen is Intellectual Property and Open Source by Van Lindberg.

    IP&OS talks about more than just patents – it is a structured introduction to all of IP (including general concepts, patents, trademarks, copyrights, and trade secrets). It also takes time to address ancillary issues, such as contracts and licenses. It was written for developers particularly, so it avoids the legal jargon as much as possible while still describing the issues.

  4. Schox also teaches a class at Michigan (his alma mater), and when I took it, we read from early drafts of this book. I really liked it, since it broke down the concepts in a way that wasn’t all legalese.

  5. Books for the casual reader is a good thing, and probalby muhc needed.

    Although I have often recommended “Patent it Yourself,” also, I have noticed that readers of “Patent it Yourself” usually have no clue about how to write a claim. Although I would not expect someone to learn all of the intricacies of claim drafting after reading such a book, I would expect (with a title of “Patent it Yourself”)that the reader would know at least as much about claim drafting as a novice that attended a one hour course on the subject, but that is usually not the case. I also would have hoped that the US PTO website would give more guidance on that subject for the do-it-yourselfer, but such is not the case. I am not really sure why that is and have not looked into the matter any further.

  6. I share your cynicism.

    The folks that are running national and international IP today are singularly callous and indifferent people, who seemingly are used to getting their way at the expense of others. What’s good for IBM, is good for the USA, after all.

    As I noted, with Tramposch and an ex-IBMer in charge at the PTO, the larger interest of the “public good” will be given short shrift. Whatever big business wants, big business gets. At least, until the next election.

  7. The issue of priority translations of interfering applications will therefore have to be addressed if there is to be any presumption of validity.

    Wanna bet?

  8. Patent Law Treaty? Albert Tramposch? Currently Administrator for Policy and External Affairs at the USPTO and formerly of the WIPO, the very person who negotiated the PLT for WIPO?

    Even if we were right on the policy, I am afraid our pleas would fall on unmerciful ears.

  9. Thank you very much!!!

    You’re welcome!

    I think, in practice, that the US examiner is going to ASSUME the published US application is entitled to the benefit of its foreign priority date …

    Foreign languages is not the only issue. Applications claiming several priorities, even when these are in an official language (and filed locally), can occasion a lot of work. Imagine an application claiming five different priorities, and an interfering application claiming a dozen different priorities. The range of potential effective dates are intermingled, so if you really want to do the job correctly you must either comb through a whole pile of documents. The alternative is to gloss over the document. This example is not entirely made up…

    … forcing the rejected applicant to get the translation if required. This is wrong headed, in the extreme.

    I never had any qualms about citing a document in a language in which the applicant was not necessarily fluent. I saw Germans cringe at French documents, Frenchmen crying over German documents, and British representatives who could understand neither French nor German. Sometimes the GB representative would read the late-published US parent of the document instead of relying on the original, resulting in somewhat contrived exchanges, as we were formally discussing different documents. I also never hesitated in citing documents in more exotic languages if it helped the case. I don’t recall having experienced any real problem.

    The same logic could potentially be applied to priority documents of interfering applications.

    So, what is required, clearly, is mandatory certified translation or else an abandonment of the claim for priority. This should be done before publication. Period.

    The original Article 88(1) EPC1973 had just such a requirement. The priority translation could be filed up to the grant under Rule 38(5) EPC1973.

    The priority translation is no longer mandatory under Article 88 EPC2000, and its implementing Rule 53(3).

    I was going to hail a loud “hear hear” to your suggestion, as imposing such a requirement in the US would automatically make prio translations available to the EPO through PAIR for the vast majority of cases. However it occured to me that this could prove impossible. Upon checking, Rule 53(3) EPC, as are many other EPC2000 provisions, is really an implementation of the Patent Law Treaty. Look at the wording of Article 6(5) PLT together with Rule 4(4) PLT.

    The US is a signatory to this treaty, even though it hasn’t ratified it yet. So, on a formal level, your proposed requirement could still be edicted, or there already could be something of the kind on the books. The PLT was submitted for ratification by the Senate, and the paperwork is now apparently back at 1600 Pennsylvania avenue gathering dust, awaiting President Obama’s “John Doe”. (I could find no trace of a signature by the present or former presidency).

    Unless, as some suspect, the US considers treaties to be only binding for other nations, the PLT is virtually ratified for all means and purposes, as its ratification is also a goal of bilateral US foreign policy.

    I looked at a group of applications published Q1 2009. About 25% of US applications claim at least one priority selected from the Markush group consisting of CN, KR, or JP; the corresponding figure for EP is 19%. (And we’re not talking of European languages other than English which the USPTO can’t handle).

    The issue of priority translations of interfering applications will therefore have to be addressed if there is to be any presumption of validity.

  10. A book recently published by the Practising Law Institute entitled “Intellectual Property Law Answer Book 2011-2012″ is a great reference for explaining the key facets of intellectual property law – the first 15 chapters are dedicated to patent law. It is in question and answer format making it extremely easy for law students, engineers and laypeople to understand and digest. A supplement will likely be generated to address the AIA changes but the book is still very useful in its current form.

  11. I should add:

    Depending on the result, A2 can either be cited against A1 for novelty AND inventive step under Art. 54(2) and 56, or only novelty under Art. 54(3) or not at all.

  12. “inventors who want to better understand the system without actually becoming patent agents”

    Yikes. Pro se with a registration number is always a huge red flag. But I suppose that’s okay as long as it stayed at a Holiday Inn Express.

  13. I guess that if you want your application to count as prior art, you better supply translations even when they’re not asked

    LOL. You “guess”? Seems like a no-brainer, regardless of what changes there might be to “prior art” in the AIA.

    Here’s another easy one: if you want any document to “count” as prior art, publish it in English or whatever the official language is in the region you want it to “count” in. It will greatly increase the odds that Examiners and other interested parties in that region will identify it as prior art.

  14. Malcolm, you are correct that a publication of a foreign priority document makes it prior art as of its date of publication. What I am concerned about here is the prior art status of a published application under the new statute.

    Geez, Ned, maybe next time you can try simply asking the question that you are seeking an answer to.

  15. One man walked into a bar and said “Hey, I found a great new book on U.S. patents”

    The other man, a seasoned U.S. patent attorney, said “who cares?”

  16. Fairfly, thanks. Thank you very much!!!

    I think, in practice, that the US examiner is going to ASSUME the published US application is entitled to the benefit of its foreign priority date forcing the rejected applicant to get the translation if required. This is wrong headed, in the extreme.

    Assume we had a rule that would prohibit an Examiner from citing a published application A2 (patent) as of its foreign priority date P2 unless he demonstrated, as in the EPO, that application’s A2 entitlement to priority P2. If that applicant A2 did not file a certified translation, the examiner would be in no position to make such a showing. He could not make out a prima facie case.

    THIS, of course, is entirely unsatisfactory as the application A2 or patent as the case may be may well be entitled to priority, leaving the validity of the application A1 being examined undetermined during ex parte prosecution. So, what is required, clearly, is mandatory certified translation or else an abandonment of the claim for priority. This should be done before publication. Period.

  17. Wouldn’t a book published in September 2011 be, formally, instantly obsolete after the passage of the AIA?

    and

    Was 102(e) repealed when I wasn’t looking?

    W

    T

    F

  18. I rifled through my bookshelves, and found another introductory book: “Successful Patents and Patenting for Engineers and Scientists”, Michael A. Lechter [editor], IEEE Press, 1995; 381 pages.

    It’s a bit old, and there doesn’t seem to be a newer edition. It does seem quite good to me.

  19. Ned,

    From the words “and was effectively filed before” I infer that the interfering application is also entitled to its own priority date. I also read in a French-language blog that the Hilmer doctrine is no longer applicable under 102(d) the new law. I would therefore suppose that the new resulting practice would resemble that at the EPO.

    At the EPO, the examiner of application A1 sh/w/ould check that it is entitled to its priority date P1, and the same examiner would check that the interfering application A2 is also entitled to its priority P2. A1′s examiner needn’t have any contact with A2′s. A2 can even have been refused or withdrawn at the time A1 is examined. Depending on the result, A2 can either be cited against A1 for novelty AND inventive step under Art. 54(2) and 56, or only novelty under Art. 54(3).

    Sometimes the examiner finds out that P1 is not the “first” application in the sense of Art. 4g of the Paris Union or its corresponding EPC disposition. Things can get very sad for A1′s applicant.

    There is a slight problem concerning foreign language priorities at the EPO. EPC2000 introduced a new rule 53, supposedly in the name of applicant friendlyness, where translations of foreign priorities which are not in EN, DE, or FR can only be required from the applicant when necessary for the application at hand.

    Suppose that A2 in the above example was a validly filed EP application, but had a Korean-language priority P2. A2 is citable against A1 under 54(3), but in order to assess A2′s priority (and prior art date) I would need a translation of P2. Alas, under rule 53 I cannot request a translation, only from A1′s applicant. I guess that if you want your application to count as prior art, you better supply translations even when they’re not asked, or formally state that your application is a true translation of the priority one. The EPC is also silent on the question of what to do if P2 is in a language which the examiner can potentially understand, such as NL, IT, ES or SE, but for which no translation was provided, as allowed under Rule 53. Is A2′s priority date of P2 valid or not?

    There’s another aspect. If A2 was filed via the PCT and A1 was filed directly at the EPO then you would have to stay A1′s prosecution until expiry of the PD+31 month delay for A2 to enter the regional phase. This works against accelerated examination, and management dreams of examiners deciding to grant applications in the blink of an eye are only that, dreams.

  20. Malcolm, you are correct that a publication of a foreign priority document makes it prior art as of its date of publication. What I am concerned about here is the prior art status of a published application under the new statute. The prior art section reads, in pertinent part,

      ‘‘(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed ivention.”

    I would agree with your second answer that the prior art date of the published application is its filing date when, during subsequent prosecution, it is determined that no claim in the application is entitled to the priority date of its parent application under section 119.

    This raises an interesting question, does it not? What is the burden of the patent office in issuing a prior art rejection of the published application as of its foreign priority date? Does the patent office have the burden of proof that some claim, currently unexamined, is entitled to priority? What if during the current prosecution a different examiner disagrees with the examiner applying the prior art rejection? Which examiner controls?

    All this points out to me is that the new statute at least in this area is not well thought out.

  21. …was filed.

    False. The prior art date is the date publication or disclosure, whichever is earlier.

  22. Ned Entitlement to priority is required for a priority application to be entitled to prior art status.

    To the extent this is comprehensible, it is false. Priority documents are “entitled to prior art status” the moment they are publically available. That is, published priority documents have prima facie “prior art status” with respect to any unrelated (by priority claim) and subsequently invented subject matter.

    What is the prior art date of a published application when in subsequent prosecution a final determination holds that no claim is entitled to priority of, for example, a provisional or foreign application to which priority was claimed under 35 USC 119?

    The date that the published application was filed.

  23. I thought the AIA was going to be found unconstitutional…

    Brought to you by:
    Trolls losing actual legal discussions

  24. Thought piece.

    Entitlement to priority is required for a priority application to be entitled to prior art status.

    What is the prior art date of a published application when in subsequent prosecution a final determination holds that no claim is entitled to priority of, for example, a provisional or foreign application to which priority was claimed under 35 USC 119?

  25. Wouldn’t a book published in September 2011 be, formally, instantly obsolete after the passage of the AIA?

    I thought the AIA was going to be found unconstitutional because in some people’s minds it promotes protecting inventions as trade secrets instead of patents. And because you can file on obvious variations of someone else’s invention and maybe get a patent.

  26. I’m aware of “Inventing for dummies”, a self-help book available in both US and UK versions. I have the latter version. It seems serviceable, even though most of the content deals with business plans, manufacturing, financing, etc., and only about one quarter to one third of the book is concerned with IP proper.

    There is another book in the series which is apparently more specifically targeted to the IP topics. The US and UK versions have somewhat different titles. I have never seen these from close. I don’t know either how any of the aforementioned compare with the books proposed by Dennis.

    Wouldn’t a book published in September 2011 be, formally, instantly obsolete after the passage of the AIA?

  27. “The Chemist’s Companion Guide to Patent Law” is written by a couple of Ph.D. chemists in pharma, one of whom is also a patent attorney. It is very readable and of good depth. The focus not surprisingly is the chemical arts, drug discovery and pharma practice particularly. The basics are well covered.

Comments are closed.