Wildy logo
(020) 7242 5778
enquiries@wildy.com

Wildy’s Book News

Book News cover photo

Vol 21 No 11 Nov/Dec 2016

Book of the Month

Cover of Criminal Injuries Compensation Claims

Criminal Injuries Compensation Claims

Price: £99.95

Pupillage & Student Offers

Special Discounts for Pupils, Newly Called & Students

Read More ...


Secondhand & Out of Print

Browse Secondhand Online

Read More...


From Clones to Claims: The European Patent Office's Case Law on the Patentability of Biotechnology Inventions in Comparison to the United States and Japanese Practice 4th ed


ISBN13: 9783452247384
ISBN: 3452247384
New Edition ISBN: 9783452274328
Published: August 2006
Publisher: Carl Heymanns Verlag KG
Country of Publication: Germany
Format: Hardcover
Price: Out of print



The European Patent Convention now has 31 contracting states and 5 extension states are available. In 2004, about 115,000 patent applications were filed at the European Patent Office. A large number of these applications are biotech applications. As a result, the jurisprudence involving this technology has further developed.

The European Patent Office still provides satisfactory absolute compound protection with claims of acceptable breadth in terms of enablement (as opposed to its contracting states Germany and France). The Technical Board has issued the final decision in the onco-mouse case, deliberating extensively on the ethical aspects of patenting animals. The Enlarged Board also issued two very important decisions. They deal with the admissibility of disclaimers. Finally, the European Patent Office’s jurisprudence has provided interesting decisions on inventive step that make it possible to patent human orthologues even though structural non-obviousness as a defense of inventive step is not available in the European Patent Office.

With harmonization being paramount, the United States Patent and Trademark Office and the United States federal courts continue to examine and to rule on claims directed to biotechnological inventions. Among the important United States decisions affecting biotechnology since the last edition are Merck v. Integra (defining the scope of the safe harbor); In re Fisher (applying the requirement of utility to ESTs); SmithKline Beecham v. Apotox (confirming that inherent anticipation does not require any scienter or appreciation requirement); Noelle v. Lederman (setting forth the enablement and written description requirement for antibodies); Rasmusson v. SmithKline Beecham (requiring more than just a right guess to satisfy the credible utility standard); and Phillips v. AWH (examining and clarifying rules for claim construction).

This book again attempts to provide an overview of the jurisdiction of the EPO and the USPTO and United States courts. This time, there also is a Japanese co-author who has contributed an overview over Japanese biotech patent practice. The Japanese contribution indicates that the Japanese practice is more similar to the EPO’s practice than to the US practice, although the written description requirement is now also rather restrictively applied in Japan.

In view of its detailed content and insight into recent developments at the EPO and in the US and Japan, this book is not only useful for beginners in the field but is especially useful for experienced patent practitioners in industry and private practice who want to be prepared when writing their patent applications for international filing, prosecution, litigation, interference and opposition proceedings (which also exist in Japan and which may also be forthcoming in the US).

Subjects:
Intellectual Property Law
Contents:
Preface to the Fourth Edition
Contributors to the Fourth Edition;
1. Patentable Subject Matter: Legal Basis, Summary and Discussion of the EPO, US and JPO Practice
2. Patentable Subject Matter: The EPO's Case Law
3. The Person Skilled in the Art: Legal Basis, Summary and Discussion of the EPO, US and JPO Practice
4. The Person Skilled in the Art: The EPO's Case Law
5. Corrections and Amendments: Legal Basis, Summary and Discussion of the EPO, US and JPO Practice
6. Corrections and Amendments: The EPO's Case Law
7. Clarity of Claims: Legal Basis, Summary and Discussion of the EPO, US and JPO Practice
8. Clarity of Claims: The EPO's Case Law
9. Enabling Disclosure: Legal Basis, Summary and Discussion of the EPO, US and JPO Practice
10. Enabling Disclosure: The EPO's Case Law
11. Deposit: Legal Basis, Summary and Discussion of the EPO, US and JPO Practice
12. Deposit: The EPO's Case Law
13. Priority: Legal Basis, Summary and Discussion of the EPO, US and JPO Practice
14. Priority: The EPO's Case Law
15. Novelty: Legal Basis, Summary and Discussion of the EPO, US and JPO Practice
16. Novelty: The EPO's Case Law
17. Inventive Step: Legal Basis, Summary and Discussion of the EPO, US and JPO Practice
18. Inventive Step: The EPO's Case Law
19. Decisions of the EPO Dealing with Procedural Issues
20. Examples of Claims for a European Patent Application
21. Examples of Claims for a US Patent Application
22. Examples of Claims for a Japanese Patent Application
23. How to Draft the Description of a European Patent Application
24. How to Draft the Description of a US Patent Application
25. How to Draft the Description of a Japanese Patent Application
26. How to Keep Notebooks for Successful Interferences
Decisions of the EPO
Decisions on US Cases
Decisions on Japanese Cases
European Statutes
US Statutes
Japanese Statutes
Index;