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Vol 21 No 10 Oct/Nov 2016

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This book is now Out of Print.
A new edition is due, details can be seen here:
Patents for Chemicals, Pharmaceuticals and Biotechnology: Fundamentals of Global Law 6th ed isbn 9780199684731

Patents for Chemicals, Pharmaceuticals and Biotechnology: Fundamentals of Global Law 5th ed


ISBN13: 9780199575237
New Edition ISBN: 9780199684731
Previous Edition ISBN: 0199273782
Published: March 2010
Publisher: Oxford University Press
Country of Publication: UK
Format: Hardback
Price: Out of print



The chemicals, pharmaceuticals and biotechnology industries worldwide rely upon being able to patent inventions in order to protect investment in research and development, and to reap commercial rewards.

An increasingly globalised sector requires a global perspective, and Philip Grubb's highly acclaimed book guides the reader through the legal and procedural complexities of the British, European, Japanese and US patent systems, and explains in detail the role of patent practitioners (both in-house and in private practice) in maximising the commercial potential of their client's or company's innovative products.

This eagerly awaited fifth edition provides vital updating to take account of the latest legal developments, while retaining focus on the relevant technology and industry practices that sets it apart from more general book son patent law and procedure.

Patents for Chemicals, Pharmaceuticals and Biotechnology provides the reader with a complete description of the techniques and industry know-how that underlie successful patent practice and portfolio management and will be invaluable to all patent agents and practitioners working in the area of patent law. With its lucid and accessible presentation and practical approach, this book will also be welcomed by scientists, researchers and managers without a legal background.

New to this edition:-

  • Includes a new chapter on patent law harmonization
  • EPC 2000 (and corresponding changes to national laws)
  • The London Agreement
  • Changes to TRIPS and proposed changes to CBD
  • Patent Law Treaty
  • Patent aspects of Free Trade Agreements
  • Trilateral Cooperation
  • Recent US, EPO and UK case law
  • Increasing importance of emerging markets such as China, India, Brazil

Subjects:
Intellectual Property Law
Contents:
PART I: INTRODUCTION AND BACKGROUND TO THE MODERN PATENT SYSTEM
1. THE NATURE AND ORIGINS OF PATENT RIGHTS
What is a Patent?
Early History in England
Early History in Continental Europe
Early History in America
The Consideration for the Grant of a Patent

2. HISTORICAL DEVELOPMENTS
UK 1800-2009
USA 1790-2009
Other Industrialized Countries
Developing Countries
International Developments
Outlook

3. HARMONIZATION OF PATENT LAW
Introduction
The TRIPs Agreement
TRIPs Implementation - Changes to Patent Laws
Further Initiatives on Harmonization
The Convention on Biological Diversity (CBD)
Opposition to TRIPs
Summary

PART II: PATENT LAW AND PROCEDURE
4. WHAT CAN BE PATENTED
The Requirements of the European Patent Convention and European National Laws
The Requirements of United States Law
Grace Periods
Special Categories of Inventions

5. FILING A PATENT APPLICATION
Should an Application be Filed?
When to File
Where to File
The Foreign Filing Decision
Non-Convention Filings
European Patent Applications
International Applications
Registration and Patents of Importation
Petty Patents

6. OBTAINING A GRANTED PATENT - PCT PROCEDURE
PCT Procedure
General
Ch. I Filing an International Application
Ch. II: The IPRP

7. OBTAINING A GRANTED PATENT - EPO PROCEDURE
Procedure in the European Patent Office
Appeals in the EPO

8. OBTAINING A GRANTED PATENT - NATIONAL PROCEDURES
Types of Examination
Deferred Examination
Oppositions
Procedure in the United Kingdom
Procedure in the USA

9. MAINTAINING A PATENT IN FORCE AND EXTENDING THE PATENT TERM
Patent Term
Renewal Fees
Extension of Term
Extensions to Compensate for Regulatory Delays
Working Requirements
Licences of Right

10. ENFORCING PATENT RIGHTS
What Constitutes Infringement
Infringement in the UK
Infringement in the USA
Procedure in the UK
Procedure in the USA
Procedure in Continental Europe
Procedure in Asia

PART III: PATENTABILITY OF INVENTIONS IN SPECIFIC TECHNICAL FIELDS
11. INVALIDITY AND AMENDMENT OF GRANTED PATENTS
Grounds of Invalidity in the UK
Revocation Proceedings
Amendment of British Patents
Invalidity and amendment in the USA
Invalidity and Amendment in the EPO

12. CHEMICAL INVENTIONS
Novel Compounds
Selection Inventions
Disclaimers
Compounds of Unknown Structure
Polymeric Compounds
New Salt Forms
New Physical Forms
New Synthetic Processes
Analogy Processes
New Compositions and Mixtures
New Uses and new Application Processes

13. PHARMACEUTICAL INVENTIONS
New Chemical Entities
Pharmaceutical Compositions
First Pharmaceutical Use
Second Pharmaceutical Use
Scope of SPC Protection
Regulatory Data Exclusivity
Orphan Drug Exclusivity

14. BIOTECHNOLOGICAL INVENTIONS
What is Biotechnology?
Patents and Biotechnology
Microbiological Inventions
Recombinant DNA Technology
Monoclonal Antibody Technology
More Recent Technologies

15. PATENTING OF GENES, PLANTS AND ANIMALS
Patents and Life
Human Genes
Transgenic Animals
Transgenic Plants
Patenting of Animals, Plants and Human Cells
Morality Issues
Patents for Life - from Bacteria to Oncomice
Why are Patents being Targeted?

PART IV: PATENTING IN PRACTICE
16. SOFTWARE-RELATED AND BUSINESS METHOD INVENTIONS
Relevance of Software and Business Method Inventions to Chemistry and Biotechnology
Patenting of Software-Related Inventions in the EPO
Patenting of Software-Related Inventions in the UK
Patenting of Software-Related Inventions in the USA
Business Method Patents

17. THE PATENT PRACTITIONER AND HIS FUNCTIONS
The British Patent Profession
The Patent Profession in the USA
The Patent Profession in other Countries
European Patent Attorneys
Patent Attorneys in Private Practice
Industrial Practice
The Job of the Patent Practitioner

18. DRAFTING THE PATENT SPECIFICATION
Drafting the Scope
The Structure of the Patent Specification
Priority and Foreign Filing Texts
Background of the Invention and Prior Art
US Sufficiency Requirements
Sufficiency Requirements in the UK and the EPO
Sufficiency Requirements in other Countries
Special Requirements for Biotech Inventions
Length of Text

19. DRAFTING THE CLAIMS
The Purpose and Nature of Patent Claims
Form of Claims
The Scope of the Claims

20. PROSECUTION OF THE PATENT APPLICATION TO GRANT
Lack of Unity
Lack of Novelty
Lack of Inventive Step
Interviews with the Examiner

PART V: COMMERCIAL EXPLOITATION OF PATENTS
21. INVENTORSHIP, OWNERSHIP AND COMPENSATION
Inventorship in the UK
Inventorship in the EPO
Inventorship in the USA
Ownership
Compensation for Employee Inventors
The Right to Apply for a Patent and to be Granted a Patent
Co-ownership
Disputes as to Ownership
Recordal and Transfer of Ownership

22. COMMERCIAL EXPLOITATION OF PATENTS
Patents to Exclude the Competition - the Pharmaceutical Industry
Patents for Survival - the Biotechnology Industry
Patents as a Source of Royalty Income - Universities
Patents as Lottery Tickets - Individual Inventors
Patents as Bargaining Chips - the Electronics Industry

23. HOW TO CATCH THE INFRINGER - AND HOW NOT TO BE CAUGHT
From the Viewpoint of the Patentee
From the Viewpoint of the Potential Infringer

24. PATENT ASPECTS OF LICENSING
Patent Conflict Licences
Technology Transfer Licences
The In-licensing Process
Out-Licensing - Patent Strategy for the Licensor
Research Collaboration Agreements
Contract Research Agreements
Funding Agreements
Compound Purchase Agreements
Licence Contracts

25. PATENTS AND COMPETITION LAW
Charges against the Patent System
Competition Law - United Kingdom
Competition Law - EU
Patent Licence Agreements in the EU
Competition law - USA
Collaboration between JD & EC Commission