Patently-O Bits and Bytes No. 317

  • Learning International IP: A relatively new patent-attorney asks the following question: “I find myself very unfamiliar with foreign patent practice. Could you recommend a book/other resource that discusses the intricacies of patent prosecution in foreign countries from the point-of-view of a US patent practitioner?” Suggestions?
  • Learning by Watching: Professor Beckerman-Rodau is spearheading an IP Podcast series available for free from Suffolk Law. [LINK]
  • Learning IP Theory: Three fairly new books recently arrived in the mail. All would be considered left leaning.

9 thoughts on “Patently-O Bits and Bytes No. 317

  1. 8

    OT via 12:01 Tuesday:

    link to

    Following the Final Rejection, the Applicants interviewed the Examiner. The substance of that interview, as summarized by the Examiner:
    “The rejections under 101, 112, and 103 were discussed.”

    And then Allowance.

    Evidently, “reformatting data” is sufficiently tranformative to satisfy Bilski, at least in one Examiner’s mind.

    I’m really hoping that the Supremes smack this nonsense down for good.

  2. 7

    I second the suggestion from Paul Cole. The book has a value way beyond its modest price. The mid-Atlantic aim is useful because, when it comes to gaining an inkling how the ROW does patent law, once a US practitioner has got as far as the UK then all the rest of the world isn’t a million miles away.

    Harmonised European patent law is half English. The other half is German. Germany it was, who set up the Japanese Patent Office a hundred years ago and Germany it was who, much more recently, set up the Chinese Patent Office.

  3. 5

    Try “Fundamentals of Patent Drafting” published by the Chartered institute of Patent Attorneys in London, England. Details can be downloaded from:

    link to

    The cost is GB £25 + £10 for postage and packing, which is inexpensive for a legal textbook. The main emphasis is on drafting because problems introduced at the drafting stage can be difficult to overcome, but there is discussion of the technical problem test as applied by the EPO. The book aims to take a mid-Atlantic view and there is discussion of relevant cases in the US, in the UK courts and before the EPO Appeal Boards.

  4. 4

    With re to international IP, while I currently practice in Australia I’m US trained and have used (and continue to use) West’s “Patents Throughout the World”. It’s a 2 volume looseleaf set (so it can be updated) and has information on the patent systems (or lack thereof) of countries and regions from Afghanistan to Zimbabwe.

  5. 2

    Supporting moral rights is left leaning?

    At first blush it may seem that giving the individual additional rights is in line with the pro-property rights approach usually associated with the right. But moral rights generally cannot be assigned. So in that sense moral rights are not really a property right, and in fact they reduce the value and flexibility of the property rights in the work.

    I’ll also add the (very) weak argument that strong moral rights are typically found in European countries, which tend to be significantly to the left of the United States.

    Whether moral rights are a good idea I’m not particularly competent to say as that’s not really my area, but I have no problem with the assertion that moral rights are more likely to be supported by progressives than conservatives.

  6. 1

    Supporting moral rights is left leaning? Maybe I’m not quite the southpaw I always thought I was…

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