Invention Analysis and Claiming presents a comprehensive approach to analyzing inventions and capturing them in a sophisticated set of patent claims. A central theme is the importance of using the problem-solution paradigm to identify the "inventive concept" before the claim-drafting begins. The book's teachings are grounded in "old school" principles of patent practice that, before now, have been learned only on the job from supervisors and mentors.

'An entertaining legal dictionary with a difference.' – BabyBarista website 'Intellectual property has a vast, perplexing and diverse vocabulary, and this enriching Dictionary provides a starting point for understanding new concepts and crafting precise definitions to meet the needs of a particular case. . . well worth a read.' – IPKat 'Dr Groves set himself the monumental task of assembling a work that would be both a dictionary of the most important terms in intellectual property law and a ready resource for IP students and practitioners worldwide. He has succeeded admirably: his book not only covers the field but also glitters with unexpected delights (the entry on "goodwill" is a must-read). This compendium is essential for the desktop (or laptop) of anyone whose work involves intellectual property.' – Robert C. Cumbow, Graham & Dunn PC, US 'Confused between community patent review and community patents? Lost in a thicket of dockets, rocket or otherwise? Let Peter Groves' Dictionary of Intellectual Property Law be your guide. Filling almost 500 often lighthearted, occasionally acerbic, but invariably fact-packed pages, the book takes you from the ActionAid Chip and the Air Pirates case through BIRPI, Cognating, Dockets, Evergreening; Jepson, Pedrick's cat and Simkins; PHOSITA, Trundlehumpers, the verb "to Uncopyright" and X-Patents, all the way to Zwart maken. Essential reading.' – David Musker, Partner, RGC Jenkins & Co. 'Do not be put off by the word "dictionary". This is a fascinating, witty and erudite little volume, packed with interesting and useful information on the whole gamut of intellectual property. It leaves one (this one anyway) hungering for more and wanting to delve more deeply into fields that have nothing to do with earning one's daily bread.' – Tony McStea, Senior Patent Attorney, Global Patents, Givaudan Schweiz AG 'This work is splendid. As an intellectual property litigator I ask, "why did no-one do it before"? Was it for lack of the creative idea, or did no-one have the diligence and erudition of Peter Groves to perfect it? and now that it has been done, we will wonder how we managed without it.' – Jonathan Turner, Barrister Intellectual property has a vast, perplexing and diverse vocabulary, and this enriching Dictionary provides a starting point for understanding new concepts and crafting precise definitions to meet the needs of a particular case. Not only are new words and phrases being coined as technology changes and the law follows, but also the international scope of intellectual property means that IP lawyers will encounter foreign words and phrases. With over 1000 expressions defined clearly and entertainingly, this book should be the first reference point to understanding intellectual property terminology. It will be particularly helpful to practitioners when they encounter expressions they have not seen before which they need to understand the true meaning and definition of. Students finding unfamiliar terminology and concepts will also appreciate the instant explanation available from this essential resource.

Stocked with drafting checklists and sample drafting language, documents and drawings, PLI's new Second Edition of How to Write a Patent Application helps you to get all the information from an inventor that is needed to prepare a solid patent application; claim an invention with sufficient breadth; claim an invention so that those elements that render the invention 'nonobivious' are clearly set forth in the claims; and claim an invention so that the PTO will issue a patent and its validity will be sustained by the courts.

When a party develops a ‘second medical use’ for a known substance or compound, special issues of patentability arise. Jurisdictions around the world vary significantly in their treatment of such claims. This detailed country-by-country analysis provides clarity, insight, and guidance on the legal issues and practical implications of second medical use claims in nineteen jurisdictions worldwide as well as the European Union. The authors of the country chapters have been carefully selected based on a broad basis of experience and in-depth knowledge about medical patents in their respective jurisdictions. Each chapter considers such issues and topics as the following: • availability of protection; • validity of claims; • scope of protection; • enforcement; and • infringement. A general chapter about the practice of the European Patent Office (EPO) addresses in particular the latest changes in the format of second medical use claims from the “Swiss-type claims” to the “EPC 2000 claims”. Specific issues and national peculiarities which deviate from the EPO practice are explained in the various national European chapters, while chapters on jurisdictions outside Europe cover both prosecution and enforcement of patents with second medical use claims. As a comparative law study and a collection of contributions from around the world on an important and controversial field, this book will prove of tremendous practical interest for the industry involved and for the public. Applicants for pharmaceutical patents, third parties, and interested legal practitioners will benefit greatly from its thorough comparative analysis and guidance. This book is the second volume in the AIPPI Law Series which has been established together with the International Association for the Protection of Intellectual Property (AIPPI).

Antibodies have revolutionized medicine and biotechnology, and have become indispensable tools in therapy, diagnostics, analytics, and research. Therapeutic antibodies, for example, have come to dominate the ranks of blockbuster drugs, currently accounting for 10 out of the top 15 best-selling medicines. At the same time, a body of case law dealing specifically with the patentability of antibody-related inventions and the enforcement of antibody patents has emerged in major jurisdictions. The, at times, significant divergences between different jurisdictions have been compounded by recent decisions in the United States, most notably Amgen v. Sanofi, 872 F.3d 1367 (Fed. Cir. 2017), which have severely curtailed the possibilities to obtain broad antibody patents. It is therefore essential to understand how antibody inventions are assessed in different jurisdictions in order to secure an optimal patent protection and to successfully enforce such patents. This book provides practitioners with a comprehensive resource elucidating all aspects of the patenting of antibodies from initial drafting and prosecution to enforcement, using a country-by-country format. It covers 23 of the most important IP jurisdictions worldwide – i.e., the European Patent Office, France, Germany, Italy, the Netherlands, Poland, Spain, Switzerland, the United Kingdom, Israel, the United States of America, Argentina, the Andean Community (Bolivia, Colombia, Ecuador, and Peru), Brazil, Canada, Chile, Mexico, China, India, Japan, Singapore, South Korea, and Australia. The 35 contributors to this book, all distinguished experts in this field, provide clear and practice-oriented advice on a range of topics including: – Which types of antibody inventions are patent-eligible? – Which types of functional and structural features are accepted for claiming antibodies? – What needs to be considered when defining antibodies in terms of their antigen, target affinity, binding specificity, epitope, competitive binding and other characteristics in relation to reference antibodies, as well as their effects on the target? – Which pitfalls must be avoided when defining amino acid sequences, chemical modifications or glycosylation patterns, and when relying on cell line deposits? – Which breadth of claims is accepted for antibody inventions, and what experimental support is required? – Which specific medical applications of antibodies can be claimed? – How is inventive step assessed in the specific case of antibody inventions? – What has to be considered when enforcing antibody patents, including in relation to biosimilars as well as the doctrine of equivalence? All chapters follow the same structure, which makes this book easily accessible and allows a direct comparison between different jurisdictions. Practitioners will find the much-needed tools and guidance to secure the best possible patent protection for antibody inventions in 23 of the most important jurisdictions worldwide. This book is the fifth volume in the AIPPI Law Series which has been established together with the International Association for the Protection of Intellectual Property (AIPPI), a non-affiliated, non-profit organization dedicated to improving and promoting the protection of intellectual property at both national and international levels.

Through the prisms of a data scientist, a patent attorney, and a designer, this book demystifies the complexity of patent data and its structure and reveals their hidden connections by employing elaborate data analytics and visualizations using a network map. This book provides a practical guide to introduce and apply patent network analytics and visualization tools in your business. We incorporate case studies from renowned companies such as Apple, Dyson, Adobe, Bose, Samsung and more, to scrutinise how their underlying values of patent network drive innovation in their business. Finally, this book advances readers’ perspective of patent gazettes as big data and as a tool for innovation analytics when coupled with Artificial Intelligence.

The Essentials of Patent Claim Drafting is a practical guide to the drafting of patent claims in U.S. patent applications. The actual mechanics of assembling both basic and complex claims are covered in-depth from simple mechanical cases to complex chemical and pharmaceutical cases. The emphasis is on the how-to of claim drafting, rather than on the history and theory of claiming. It contains multiple examples for all types of claims which a practitioner is likely to draft, and provides an easy reference for the drafting of particular types of claims.This 2022 Edition further explains the procedures involved with patent claim drafting, addressing claim language considerations and the most recent case law and Patent Office guidelines. Thus, it is an ideal reference guide for novice patent attorneys and patent agents, as well as independent inventors, lawyers, and patent examiners.

In recent years, business leaders, policymakers, and inventors have complained to the media and to Congress that today's patent system stifles innovation instead of fostering it. But like the infamous patent on the peanut butter and jelly sandwich, much of the cited evidence about the patent system is pure anecdote--making realistic policy formation difficult. Is the patent system fundamentally broken, or can it be fixed with a few modest reforms? Moving beyond rhetoric, Patent Failure provides the first authoritative and comprehensive look at the economic performance of patents in forty years. James Bessen and Michael Meurer ask whether patents work well as property rights, and, if not, what institutional and legal reforms are necessary to make the patent system more effective. Patent Failure presents a wide range of empirical evidence from history, law, and economics. The book's findings are stark and conclusive. While patents do provide incentives to invest in research, development, and commercialization, for most businesses today, patents fail to provide predictable property rights. Instead, they produce costly disputes and excessive litigation that outweigh positive incentives. Only in some sectors, such as the pharmaceutical industry, do patents act as advertised, with their benefits outweighing the related costs. By showing how the patent system has fallen short in providing predictable legal boundaries, Patent Failure serves as a call for change in institutions and laws. There are no simple solutions, but Bessen and Meurer's reform proposals need to be heard. The health and competitiveness of the nation's economy depend on it.