Law School Casebook Review: Patent Law Fundamentals (Brean & Snow) 2d Ed

By David Hricik, Mercer Law School

I realize most readers aren’t law professors, so you can stop now…

I have taught IP courses for years and often the books seek to teach the subject through cases, which is a very difficult way to learn it.  This book — Patent Law: Fundamentals of Doctrine and Policy (Carolina Academic Press) — does a great job of using cases to illustrate key points, but often provides descriptive text and problems, and does so in a practical and concise way, and a way geared toward current learning trends.

I’ll be brief, but with respect to its organization, the authors use the funnel approach for many subjects, starting broad (a patent gives a negative right to exclude) and then narrowing (the right to exclude is measured by the claims). It also uses spaced repetition (those two subjects are chapters apart but mentioned in both places), and includes self-assessment questions after each chapter.

More importantly to me, it is efficient.  Again, most of it is text, not case excerpts, and it teaches using simple technology (baking pants — I use pizza to explain patents because it’s easy to draft claims to describe pizza and to understand that the fewer words/limitations the “broader” the patent but this works too).  Further, it describes prosecution and litigation primarily with text, with key points emphasized by cases.

Finally, unlike some other books I’ve considered, it addresses the pragmatics of litigation, including the importance of experts, of local rules (and standing orders), and the typical remedy problems are addressed in an easy-to-grasp manner.

And if you’ve read this far, yes, I hope to get back to blogging regularly and if you know me, you know it has been a difficult couple of years.


Our Book Reviewed

The book I’ve co-authored with Mercedes Meyer has been reviewed in JPTOS by the editor in chief.  Here’s a snippet:

Patent Ethics: Prosecution is a comprehensive meditation on the complicated world of prosecution ethics. The book is illustrated with real world examples and includes substantial discussion of the varying case law on the many ethical dilemmas faced by patent practitioners. While the case law is often murky, the Authors’ analysis is clear and straightforward. It is an excellent reference on a matter that few practitioners truly understand.

By your copy now by clicking Amazon.

Brilliant New Book on Ethics in Prosecution 2015 Edition Out Now!

By David Hricik

Proud to announce that the 3rd edition of Patent Ethics: Prosecution that I co-authored with Mercedes Meyer is now available here!  This edition adds a massive amount of new material to deal with the new PTO ethics rules and the fast-moving, roller coaster world of ethical issues in patent practice!

From the description:

Patent Ethics: Prosecution (2015 Edition), by David Hricik and Mercedes Meyer, is an essential guide to the ethical issues arising in the course of the patent prosecution process. By providing relevant rules and case law, it allows practitioners to identify ethical problems before they arise and to address them most effectively when they do. Patent Ethics: Prosecution is one of two volumes on patent ethics — the second focuses on litigation — and is the first of its kind to combine the United State Patent and Trademark Office (PTO) rules with commentary by the authors, which distills the authors’ own experience and expertise in patent prosecution into effective practice strategies.

The 2015 Edition is particularly relevant considering the significant ramifications with the United States Patent & Trademark Office (USPTO) repealing its existing rules, the USPTO Code of Professional Responsibility, and replacing them with the new USPTO Rules of Professional Conduct. Furthermore, the 2015 Edition also comprehensively discusses ethical issues of major concern for patent law practitioners such as:
•   The increase in malpractice claims based upon patent prosecution as well as recent significant verdicts of $30 million and $70 million.

•   The USPTO’s Office of Enrollment and Discipline’s vigorous enforcement efforts, continued persistence in asserting a broad view of its jurisdiction, and resulting increase in the volume of case law and other authorities.

•   The troublesome issue of best mode and the America Invents Act.

•   The various ethical issues surrounding patent agents.

The 2015 Edition features new analysis of current client conflicts in patent practice, including when prosecution and opinion work become “adverse” to a client, the conflicts of interest created by the AIA’s approach to the best mode, and duty of candor post-Therasense. It also includes an updated PTO Code completely annotated with OED decisions on each provision.

Makes a perfect Christmas present, too!  Buy one for every lawyer in your firm!  Heck, buy two so they have one at home!