Patent Law and Theory

Edited by Toshiko Takenaka, Washington Research Foundation/W. Hunter Simpson Professor of Technology Law, University of Washington, School of Law and Professor of Law, Keio Law School, Of Counsel, Seed IP Law Group, US

'The editor of Patent Law and Theory must be congratulated for assembling a concentration of sheer patent law erudition and scholarship. The title is a noteworthy compilation of 26 well-written, remarkably accessible and thought-provoking essays that goes to great lengths in charting the contours of contemporary thought over the "the world's oldest regularly established property right". . . it manages to accomplish an ambitious endeavour of providing a comprehensive view of prevailing issues in the field of patent law and other related fields. . . the interested patent law reader will have much to gain from the fecund material found in the large majority of the title's essays. The world's corpus of patent law research is richer with the publication of this title.'

• Contents:PrefacePART I: FOUNDATIONS1. On the Economics of Patent Law and PolicyF. Scott Kieff2. Patents and Policies for Innovations and EntrepreneurshipOve Granstrand3. History of the Patent SystemJohn N. Adams4. A Spanner in the Works – Or the Spanner that Works? Patents and the Intellectual Property SystemJeremy Phillips5. International Treaties and Patent Law Harmonization: Today and BeyondTomoko MiyamotoPART II: INTERNATIONAL AND COMPARATIVE DIMENSIONS: PROCEDURAL ISSUES IN EXAMINATION6. Examination Procedure at the European Patent OfficePeter Watchorn7. Appeal Procedure before the European Patent OfficeAndrea Veronese8. Patent Office Oppositions and Patent Invalidation in Court: Complements or Substitutes?Jay P. Kesan9. Trilateral Cooperation – Mutual Exploitation of Search and Examination Results Among Patent Offices with a View to Establishing a System of Rationalized Work-SharingShinjiro Ono10. ‘Lost in Translation’: The Legal Impact of Patent Translation Errors on Claim ScopeDonald S. Chisum and Stacey J. FarmerPART III: CONDITIONS OF PATENTABILITY: ESSENTIAL REQUIREMENTS11. Patenting Software-Related Inventions in EuropeStefan Schohe, Christian Appelt and Heinz Goddar12. Utility and Industrial ApplicabilityChristopher Wadlow13. The Novelty and Priority Provision under the United States First-to-File Principle: A Comparative Law PerspectiveToshiko Takenaka14. Back to the Graham Factors: Nonobviousness after KSR v. TeleflexElizabeth A. RichardsonPART IV: PATENT ENFORCEMENT ISSUES: EXTENT OF PATENT PROTECTION AND INFRINGEMENT REMEDIES15. Extent of Patent Protection in the United States, Germany, the United Kingdom and Japan: Examination through the Concept of ‘Person Having Ordinary Skill in the Art of the Invention’Toshiko Takenaka16. Direct and Indirect Patent InfringementAlison Firth17. The Scope of Patent Protection for Spare Parts and its Extension through Other Tools of Intellectual PropertyHorst-Peter Götting and Sven Hetmank18. The Exhaustion of Patent Owners’ Rights in the European CommunityThomas Hays19. Enabling Research or Unfair Competition? De Jure and De Facto Research Use Exceptions in Major Technology CountriesSean O’Connor20. Compulsory Licensing Under TRIPS and the Supreme Court of the United States’ Decision in eBay v. MercExchangeChristopher A. Cotropia21. Adequate Compensation for Patent Infringement Damages: A Comparative Study of Damage Measurements in Japan and the United StatesToshiko Takenaka22. Resolving Patent Disputes in a Global EconomyRochelle C. DreyfussPART V: CORE ISSUES IN THE FUTURE?23. Challenges to the Sui Generis Regime of Pharmaceutical PatentsJohn R. Thomas24. Current Controversies Concerning Patent Rights and Public Health in a World of International NormsCynthia M. Ho25. Biotechnology Patent Pools and Standards SettingJorge A. Goldstein26. Patenting Industry StandardsVincent F. ChiappettaIndex