Background of the Intellectual Property in Europe

The Patent

Philip Leith
Queen’s University of Belfast
1998

The patent – after a long legal history which is linked, as might be expected, with the rise of technology and industry – has recently come to be subsumed under the term ‘intellectual property’ and is now closely related to forms of property ownership such as copyright and trade secrets, rather than its previous history of ‘warrant’ . It is a form of property which is much misunderstood both by the general public and also by many in the commercial and inventive communities to whom it is most directed. Many knowledgeable commentators reserve a measure of scepticism as to the utility of patents to inventors, a scepticism which is not to be found in other areas of intellectual property. It is commonly spoken of that only a small percentage of all patented ideas will make their way to the marketplace (perhaps around 10%) and from those an even smaller number will actually be profitable to the owner of the patent . Even after having been awarded, a patent is capable of being revoked should a commercial opponent decide to oppose its validity or litigate against the breadth of the claimed protection. Some suggest that a patent claim or description can have a subsidiary role in deliberately trying to obfuscate commercial competitors. Also, to the inventive community, whom it is supposed to serve, the patent is frequently seen as being too complex, too expensive and offering too little protection.

Despite this scepticism, the patent has been a long lasting – and relatively fixed – form of property ownership in, at least, the UK. This stability has been retained during a period of unparalleled economic and technological change – from cottage industry through to multi-national, bio-industries. Perhaps due to this stability, it has been looked upon with some envy by those wishing a secure form of property ownership – in particular those who wish to protect computer programs but also other areas such as plant breeding and animal gene manipulation. The use of the patent to protect such software is not allowed either by the legislature or by the courts in any of the European countries , but plant breeding does look set to receive some form of patented protection in future and the debate over such creatures as the Harvard Mouse continues.

The patent’s strength – in terms of providing commercial value – has been greater for its holder at some points in history than at others. Dutton, in his study of the patent during the industrial revolution shows opposition to the very idea of a patent itself from many in the legislature and judiciary and also the changing relationships between inventor and manufacturer which developed through the differing judicial attitudes .

As Charles Dickens’s demonstrated, gaining patent protection has sometimes been achieved only after a highly complex and expensive procedure. The cost of attaining a patent has – in some national systems, such as the UK – always been a major concern to the inventor. It remains so in the current European patent system. However, as we will see, there are a variety of issues which make the cost of patent protection more flexible than might first be imagined and thus allow the inventor to consider the cost of protection in a tactical manner.

Importantly, a patent is a ‘property’ right dealing with a peculiar form of property. Being based on an “idea”, it has no existence in any concrete state as have forms of ‘real’ property such as land. And it covers a highly restricted form of invention. These fundamental facts are at the heart of the provision and use of patents.

The closest relation to the patent – from the perspective of the inventor and manufacturer if not the lawyer – is the ‘trade secret’. Trade secrets, of course, are wider in form: while they can be a potential patent which has not been made public they can also relate to sensitive financial information. The inventor or manufacturer can abstain from patenting and instead rely upon trade secret protection for the invention. Trade secret protection does have advantages over the patent, in certain circumstances, but does not offer a monopoly should that secret be lost to the wider community of manufacturers. The patent, unlike a trade secret, grants a monopoly for making an invention public.

The grant of monopoly is the essential reward to the inventor for taking out a patent and provides the historical context in which the patent has moved from being a ‘warrant’ to being an article of ‘property’. In return for making known information of potential economic importance to the nation, the inventor was awarded a monopoly over the control of the use of that invention for a stated period of time. The patent is thus, in part, a method of making information public. It is a contract between the state and the inventor, but one in which only the holder of patent will litigate to defend the contract. The Patent Office which publishes the details of a granted patent is, of course, providing manufacturers and other inventors with information which they might use without resort to the inventor (and indeed the publishing of a patent could provide another inventor with the seeds for a new patent to make the first worthless). However, the grant of monopoly provides the inventor with a means of requesting a court to halt a manufacturer from using the published patent information either completely, or until agreement is reached between the inventor and/or the manufacturer. Public perception is often that patent protection can be used to stop ideas being put into production (for example, the ‘everlasting match’ is one ‘invention’ which has supposedly been kept from purchasers). This is not possible, since the monopoly awarded to the inventor is not total and there exist procedures to allow an idea to be put into commercial use against the wishes of the patent owner if, for example, the “patented invention is capable of being commercially worked … that it is not being so worked or is not being so worked to the fullest extent that is reasonably practicable” .

Part of the requirement from the inventor is that he will make ‘full disclosure’ of his invention and that this will be in a form suitable for use by other manufacturers. However, commentators have suggested that, in practice, the form of disclosure is necessarily better seen as an aid to potential litigation rather than an aid to manufacture. ‘Full disclosure’ has been radically extended in meaning since the inception of computer-based handling of patents. It refers, as traditionally, to the requirement that an invention is fully described in the patent application, but it also now relates to the ease by which other potential users of the patent (and potential rivals) are enabled to discover the published information. In hard-copy form there can only be a small number of sites where someone wishing to inspect patents can go. And, given the number of applications and successfully awarded patents, the interested party might have difficulty in keeping up with what has been published. With on-line access to patent literature, the researcher can have relatively easy access to current published applications, awarded patents and sight of patents from a variety of national sources. This potential gold-mine of information for manufacturers and other inventors has been remarked upon by many information specialists. However, in all research which has been undertaken into the use of this information by industry etc., the researchers have discovered little exploitation. For example:

In [Stephenson’s] industrial survey, of the fifteen companies visited, all but three made some use of patent information. R&D staff could request a one-off search to find the ‘state of the art’ of their project. Also, many of the staff were supplied with current awareness literature, including patents, by their information departments. Requested searches tended to be made towards the end of a project, with the feeling that any existing patents could be designed around and did not need to be considered beforehand. Use of patent information in order to solve problems was rare …

It was further found in this research that many who did use patents as a source of information viewed them as not really providing full disclosure and suffering from ‘calculated misdirection’ by attempting to misdirect the readers attention from the most important elements of the invention. This supports the contention that the patenting system can sometimes be used more as a means of protection than as ‘fully disclosing’ information source. Ullrich has suggested that it is due to the principal legal requirement of non-obviousness for patenting rather than for ‘advance’ that the information in patents is less useful than might be. He has written:

“If, however, the patentee knows or reasonably foresees the utility of his invention, releasing him from the duty to fully disclose it on the grounds that the non-obviousness alone constitutes the decisive standard of patentability would seriously reduce the benefits associated with the establishment and maintenance of the patent system …”

The reason for this loss of benefits is, of course, that the patent should exist as an information source for industry. Ullrich suggests that the current system may work poorly and that lenient disclosure requirements by the courts “do not assist in avoiding information defects”.

The National Basis for the Patent

Historically, the patent has been a national property right and patents has been awarded by a national legal system to an inventor. This has the corollary that litigation over patents has also been of a national nature: a plaintiff must litigate in each country in which he has a patent even though the defendant in each of these countries may be essentially the same corporate body. It is possible for a defendant to win in some countries but not in others and thus be allowed to manufacture and sell a product in some countries but not all. This is also possible depending upon the number of countries in which an applicant seeks a patent: usually an applicant will not protect an invention in all possible manufacturing countries and markets, but will carefully consider the required geographical extent of protection. For example, with inventions pertaining to automotive manufacture, it is unlikely that protection will be sought in any but those countries where there is a car industry.

Patents, being nationally determined, are the resultant product of different philosophies. Some countries have awarded a patent without serious investigation as to the nature of the patent (for example, Italy and Belgium and, until recently, France) and some have attempted to provide reasonably exhaustive investigations (for example, the Netherlands, Germany and the UK). Patents granted from different countries are thus not equivalent in protection, since they do not claim to offer the same level of investigation of the patentee’s claims.

The differing ‘culture’ of patent systems has been noted in, for example, different attitudes between the US and Japanese systems. In the US, the inventor’s rights have been seen to be paramount with no disclosure of the patent application until the patent has been granted (allowing the inventor to keep any non-patented invention secret) and the priority (that is, according the invention to the relevant person) is given to the first inventor rather than to the first person who makes a patent application (the filer) as happens in almost all other countries’ systems. In Japan, the emphasis – it has also been argued – is upon dissemination where late examination, publication and pre-grant opposition make ideas available to industry before grant of patent . Since there are many inventions which are not patentable despite their commercial worth, it can be seen that publication of a patent application is not always in the interests of the inventor, since publication is only non-harmful if the application results in the grant of a patent. The harmful results of publication of a patent application where the patent is not awarded – apart from wasted time and cost – include allowing competitors insights into possible future manufacturing decisions.

Despite the various patent cultures and differing emphasis, there has been a marked desire for compatibility of protection and application through harmonisation. Much of this is driven by the expressed desire of industry for a level playing field in the application of technology throughout the world – and differing levels of patent protection are seen to act against this commercial even-handedness. This new, more global attitude to the patent has arisen from the recent globalisation of capital, which is in direct opposition to the national perspective on the patent. For companies wishing to export and import around the world, differing cultural attitudes to patents can be a barrier to trade. In the European context, the driving force behind the European Patent System has been industry’s perceived need for a patent which will match the free trade system between the various EU states. Even with similar and harmonised patent laws, however, patents still require a litigation system to give them value. Since litigation is national there are still differences in the patent systems in the EU states, as we see later.

Alongside this desire for harmonisation across borders, there has also been a contradictory legislative attempt by many states to continue to use the patent as a means for developing and encouraging national industries. This is not surprising given the history of the patent. In EC Commission v. UK the Commission argued that sections of the 1977 Patents Act were counter to Article 30 EEC (relating to prohibition of free movement of goods by ‘quantitative restrictions’), particularly Section 48(3) which provided for “compulsory licences where a patent is not worked in the United Kingdom to the fullest extent that is reasonably practical or where demand for the patented product in the United Kingdom is being met to a substantial extent through importation.” The UK argued that these matters were related to the national patent (and as such were for national law to consider) and that when the Community Patent Convention was brought into operation, the Patents Act would be subject to its provisions. The European Court of Justice found against the UK arguing that the relevant sections in the Patent Act were discriminatory against working of the patent by importation. However, it should be noted that this was more a political decision than a practical one since very few compulsory licences had ever been awarded using this section (despite the number of academic articles and case notes which refer to the decision). What it does clearly show is that the Court of Justice is prepared to act against the national basis of a patent when it might potentially interfere with the community marketplace.

American multi-nationals have been in the forefront of complaints that Japan has been using its patent system as a means of protecting its own industries by making the gaining of a patent slower for non-Japanese applicants when the patent deals with commercially important areas. If true, we can see that such actions by the JPO could be based on the attitude that the priority role of the patent is as a national means of dissemination of information rather than protection of the individual’s property right. Japanese companies have also been accused of ‘Patent Flooding’ where large numbers of applications are made claiming minor technical improvements to existing patents. This latter tactic can be helpful in pressurising existing patent holders to license to Japanese firms. One attorney interviewed in this research suggested that it was not infrequently found that a Japanese company would have 40 patents in a small area and that this was ‘psychologically difficult to work around if you have only 2 even if your two are better’.

Of course, such an accusation is difficult to prove: there are also indications that Japanese patents are high in number because employees are given financial rewards for gaining successful patents for their employers. Such a situation is part of the culture of Japanese management and therefore has a national element. However, such flooding is not always advantageous since it can be expensive in patenting costs.

Though we take as a given that the patent system exists – perhaps warts and all – it is interesting to look at the suggestion in the UK Government’s green paper, Intellectual Property Rights and Innovation for techniques to swing the balance of protection of innovation back to the smaller inventor. The essential element of these proposed forms of protection was that they would cost less and would be provided within a market oriented approach (with the Patent Office, ‘freed of civil service constraints’). This Green Paper was introduced with a highly national bias (the Patent Office was to be given extra roles to play) despite the introduction of the European Patent just a short period before. The ideas contained within this paper were not taken seriously by UK patent lawyers or the UK academic patent community, though the calling for a ‘registered invention’ has echoes in the current desire in some European circles for a European utility model . Perhaps the main point to be taken from this Green Paper is that there is a continuing suggestion (from outwith the legal patent community – the Paper was prepared by the Chief Scientific Officer to the Cabinet) that national radicalism might be a counter to the perceived problems of the existing patent system.

In Europe, if not always in the UK, there has been considerable appetite for a lower level of patent protection. Effort has been put into suggesting a European Utility Model [28] which would broadly follow the German model. The Max-Planck Institut has been particularly active in trying to persuade the European patent profession and Governments to adopt such a strategy. The main rationale for this new protection relates to a favourable cost structure, more user-friendly procedures and more lenient validity requirements. Kern reports on a study funded by the EC Commission on the economic importance of the utility model to small and medium-sized enterprises (SMEs) and suggests that:

In all states, and particularly in Germany, the patent attorneys accepted rapid and simple registration of utility models as an important advantage for SMEs. Additionally, the study indicated that the lower standard of inventive step was a significant consideration for SMEs in Germany and Spain. Furthermore lower application fees presented another reason in favour of utility model protection.

The primary advantage of the utility model is that it would allow ideas which were novel (but not inventive, i.e. ‘obvious’) to be given protection and would thus reward small manufacturers, say, for their work. The contra-argument, however, to such a form of protection is that it will complicate the patent system through encouraging litigation: the utility models might be used by patent applicants as temporary measures or as ‘minefields’ to deter otherwise legitimate use of ideas. The practical advantages are, of course, quick and cheap protection; the opponents respond to this by suggesting that if the problem is that patenting is too slow and expensive, better to speed it up and cut costs than to make the system – as a whole – more complicated.

The Economics of the Patent

Though every European and national Governmental report into patenting begins by suggesting the close link between inventive activity and the patent, researchers have found it difficult to quantify just how strong is this link. And it is equally difficult to discover in which direction the link travels. Does inventive activity improve when the economy is strong and thus there are more patents applications (i.e. they can be afforded) or is it the economy which gains its strength from the inventive activity which comes from having a patent system. There are indications of both directions of linkage. We can see that patents awarded were lower in the mid-1980s after the early recession of the early 1980s which suggests that patenting activity is dependant upon strength of the economy. On the other hand, the linkage in the opposite direction would not be expected to be so obvious and so short term, and it may well be that the effect can be measured only with difficulty since inventive activity frequently happens within a highly commercial context (the R&D lab of a company) than as a free-floating variable available for measurement.

In the most well-known analysis of the UK patent system (by Taylor and Silberston) the conclusions of the link between invention and patent were not found to be strikingly strong:

Important as [patents] are in some industries, they provide on the whole only a very limited inducement for industrial invention and innovation. Where really big risks which involve large sums of money are concerned, the patent system may well not offer a sufficient inducement for public interest purposes. Here above all governmental intervention and assistance is needed, as for example in aircraft, atomic energy and space technology. … And once this help has been given, patents are of minimal importance, since more than adequate monopoly is provided by the shee[r] cost of private entry into these industries. … The patent system is essentially weak and vulnerable even in the more industrialised of modern societies, but it does confer some advantages, as we have shown, and it is an important protection for the small firm and the small man. On balance it is a valuable institution, but its economic value overall is quite modest, and it is desirable that extravagant claims should not be made on its behalf.

This research was carried out over 25 years ago and in a very different political climate to today’s UK – now governmental intervention is rarely to be found. Also, the techniques which Japanese industry have been using in patent protection (e.g. ‘vertical’ and ‘aggressive’ patenting) were not discussed to any substantial degree in this report. It may be that this report is more a picture of declining British industry than of what a healthy patent system might be capable.

Some aspects of research into patent economics are interesting, particularly where it involves empirical research. For example, Wyatt [32] suggests – using economic analysis – that the patent system tends to aid inventive activity, but directs research “too much within the total towards patentable inventions”. Being “induced inventions” they “will typically be of minor importance, representing improvements to existing technologies perhaps, rather than fundamental changes”.

Literature which examines use of ‘patents as indicators’ is small and does not show clearly that R&D programme is well measured by patent counting . The EC Commission’s research evaluation was unable to argue more strongly than “Altogether, patent indicators are an effective additional tool for the assessment of programme assumptions…”. Despite this lack of evidence to the incisive nature of these indicators, some argue that they are of great benefit. For example, according to Ashton et. al. patent information can be used in a practical manner to provide planning information, for example, to:

  • characterise the technical position of a firm in a marketplace
  • identify firms with superior technology for acquisition, joint ventures, or licensing
  • determine the rate at which a technology is growing, maturing, or stagnating
  • detect technological shifts away from past development directions

Such information is usually provided as a consultative service to industry. It is one of the services currently being offered by the EPO and some national offices. It may be that such information is best analysed by those closest to the patent, since they will be aware of technical problems in interpretation of statistics which the smaller manufacturing firm might totally miss.

It has been argued by Fox et. al. from their investigation of the transfer of invention from the University to industry that there are four clear stages from idea to successful prosecution of an invention. These stages make up an ‘innovation chain’ from invention to successful commercial implementation, and are a chain which the smaller inventor usually finds difficult to follow.

The stages are:

1. Lab process. Here the idea has been put into effect but in a very small scale experimental situation.
2. Pilot project or prototype. Here the original laboratory scale has been extended to show that the ideas work, albeit again in a laboratory situation.
3. Working production process/model. Here the idea has been put onto the factory floor or equivalent to show that the idea can work in situ. This is not a fully developed system but must show that significant economic benefits can be achieved.
4. Product on the market. The final stage.

A patent will probably be applied for at stage 1. The requirement of non-prior publication ensures that the inventor will consider staking a clear claim to his idea before he begins to tout the idea around potential manufacturers and licensers of the technology. However, there is a large gap between step 1 and step 4. Fox et. al. write:

The significance of demonstrating a production process or model under real working conditions is of great importance in achieving the commercialisation of an invention and it is the stage which is the most difficult for the university inventor to demonstrate. He may have completed the laboratory stage with [governmental funds] and then with [further governmental] assistance build a prototype or pilot plant, at which point he will normally be expected to convince industry of the effectiveness of the invention. However, industry may not yet be convinced and may require to see a working production process before it is ready to buy a licence.

These economic factors are not questions which are of direct interest in this report, but they do provide some indication of the research which is taking place in this area. Despite this overall lack of clear linkage between patent and national economic success, it is essential to understand that the patent would most probably not exist if it was not presumed to link closely with economic activity and therefore be successful as a contract between individual and state – this is the ‘rhetoric of the patent’.

One problem which must be recognised about the patent system is that much of the information which relates to it is anecdotal. It is naturally difficult to find concrete evidence that a company is using the patent system in a way which might be counter to the philosophy of a Patent Office, or counter to free-market principles, or where a patent tactic has ‘gone awry’. However, there is much in this ‘patent mythology’ which is intuitively acceptable. There are stories of patents being awarded to applicants in non-examining systems which are then claimed in CV’s to demonstrate inventiveness, even though such systems are only ‘registration systems’ and provide no indication to the likely manufacturing usefulness or novelty of the ideas so patented. And there are stories of manufacturer’s patent activities acting against their commercial interests. One relates to the design of ski boots. It has been claimed a patented boot produced by one company was highly successful and well liked by the buying public. However, the company protected the new boot by a whole host of related patents so that rival manufacturers could only do one thing in commercial response – ‘create a counter-revolution’. The counter-revolution – reviving an older style of boot – was successful and caused the commercial failure of the ‘better’, patented boot through skilful marketing.

But in conclusion, despite the lack of positive evidence for the effectiveness of the patent system in economic terms, the fact that the system supports itself from income demonstrates that users believe it to be a useful commercial tool.

Servicing the Patent System

There is no legal constraint preventing inventors resident in any of the European patent system member states (the object of this study) from preparing patent applications themselves. Certainly, a reasonable number of patent applications are so prepared. However, the construction of a patent specification so that it is capable of fulfilling its proper roles of:

specifying the claims upon which the application is based and which indicate novelty and non-obviousness (i.e. the inventive step);

  • balancing the choice between ‘broad’ and ‘narrow’ claims; and
  • acting for the patentee in potential litigation

is a difficult process. There is a clear indication that Patent Offices (especially those with an examination process) encourage the applicant to make use of a professional representative. Self-prepared applications tend to be prepared by applicants who have no prior experience with the patenting organisation and thus require more effort (adding to costs to the office) from that organisation in terms of clerical administration: they might, for example, believe that a specification contains the claims and these do not need to be re-stated in the ‘claims section’ of the application form. In terms of examination, it may be difficult for the searcher and examiner to ascertain the precise claims being made due to their lack of desired precision. More communication between Patent Office and applicant also means more cost to the Office . All of these aspects tend to make patent organisations prefer applications prepared by knowledgeable and trained professional representatives. These exist in most countries as a specific group of individuals – patent attorneys or patent agents .

Having applications prepared by middle-men significantly increases the cost of the patenting system. For example, in EPO applications which are awarded protection, roughly one third of the cost is apportioned to the patent itself, one third to the professional representative and one third to translation costs. We look in more detail at the specific costs and tactical elements involved in reducing these costs later, but for now note that the cost of representation is not insignificant.

The cost of patenting has always been a complaint of business and the lone inventor. In the UK the Green Paper Intellectual Property Rights and Innovation suggested that ‘price flexibility’ [39] might be achieved by the de-monopolisation of the patent agent. Perhaps more importantly (given that there is no evidence that the de-monopolisation which was put into place has significantly reduced costs) was the suggestion that UK patent attorneys (due to their professional rules) may be the best source of information on constructing a patent, but they were not best suited for providing the necessary commercial information which the inventor requires in order to use his patent tactically. For example, the Office of Fair Trading (OFT) investigation into the UK monopoly noted that:

The CIPA encourages their members to remember at all times the commercial objective of patenting. But other sources from within the profession commented to the Office that, although a few patent agents had developed an expertise in licensing inventions, clients (usually small firms and individual inventors) did not always understand that the patent agent was not necessarily qualified or sufficiently experienced to assess the commercial value of a patent or any other form of intellectual property. Examples were quoted of patent agents in private practice tending simply to carry out the task of obtaining patents with little or no advice on the wider issues involved in reaping the benefits of an invention. … Consequently, the Office was told that the services a patent agent offered did not always make commercial sense to the client or always gave him what he really needed.

The OFT suggested that the legal restrictions on mixed practices would, by allowing one group to have both drafting and commercial skills, lead to a significant reduction in ‘restrictions [which are] generally regarded as anachronisms that inhibited the development of new techniques and forms of organisation and worked to the general disadvantage of small firms and individual inventors’ . In effect, the problem was not seen as primarily one of a legal monopoly acting against the inventor, but that the monopoly was providing advice and support which was too narrow. In the European context, a monopoly situation has not always been seen to be problematical. The inventor can still prepare his own application but if a professional representative is to be used (as all patent offices advise applicants) then one who is registered must be used. Applicants residing outside the relevant countries must have their application processed by an EP representative (though, this does not of course mean that claims and description must be written anew – they can simply be taken from, say, the US patent application if these are in a suitable format). Those representatives from national systems who wish to become EP representatives must sit a series of examinations. These examinations cover the drafting of patent specifications, but not the commercial aspects of using patents in business. It has been suggested that having a limited number of EP representatives has added to the cost of patenting via the European route because EP representatives are in a relative scarcity.

Those organisations which produce relatively large quantities of patent applications have a tendency to use their own in-house patent attorneys. Some 20% of UK applications were found to be made by in-house agents (a similar number to those being unrepresented). Considering that these compose one third of the total number of active patent agents this suggests that in-house agents are either less efficient than their private counterparts, doing fewer applications from prior filings, or are not working full-time on drafting patent applications (for example, are involved in licensing or litigating, perhaps).

While the patent attorney is perhaps the person most actively involved with the patent and the client of the patent system, there are other roles within the patent system. For example, in the UK litigation (as opposed to application for patents) is usually carried out by barristers with an expertise in that area. The numbers involved are not great – it has been suggested to me only about 4 barristers in the UK work full time on patent work (a number of others taking patent work only when it is available). There is a distinct London patent bar with its own association which will take care of most of the litigation which is passed to them by solicitors. The UK Patent Court allows representation of clients by patent agents and studies are providing information on whether patent agents are being successful in gaining litigation work .

Conclusion

A patent is not as strong a legal entity as many other forms of ownership. The lack of strength arises from various elements – the difficult nature of invention itself; the restricted forms of invention which can be patented; the national basis for patents in an ever more international world; the close linkage between litigation and the value of a patent. Yet despite all these problems, and the consistent criticism of the inventor and the legislator, there seems to be no workable alternative to the patent. As Aubry has suggested:

The system is as imperfect as other human systems. After 350 years, it has been refined and balanced, but as a result it can be criticised for its costs and delays. However, as has been said on more than one occasion, no-one has yet thought of a better system. None of the alternatives so far seems likely to attain those particular objectives which the patent system despite its short-comings achieves day by day and week by week. That is why it is so widely used by the world’s industries.

Given this lack of alternative, rather than try to find a radical new form of warrant or monopoly for the patent, we have seen pressure to make the system more rational and, in attuning itself with growing trans-national trade, more international. The European Patent, which we look at in the next chapter, is the European attempt at rationality and trans-nationality.


Bibliography

  1. Adams J [1995] “The Herchel Smith Lecture 1995: Choice of Forum in Patent Disputes”, 10 EIPR 497.
  2. Anglehart J [1995] “Extending the International Phase of PCT Applications”, in 2 EIPR 81.
  3. Armitage E [1991] “Updating the European Patent Convention”, IIC Vol. 22, No 1., 1-10.
  4. Ashton W.B., Levine L.O. & Campbell R.S. [1985] Patent Trend Analysis: tracking technology change for business planning, Batelle Technical Inputs to Planning, Rep No 44, Columbus, Ohio
  5. Aubrey J.M. [1985] “A Justification of the Patent System”, in Phillips, 1985.
  6. Beier J [1985] “Actual Costs of Patenting in European and National Procedure – results of a FICPI study”, in IIC Vol 27, No 2, 213-227.
  7. Brandi-Dohrn M [1994] “The Unduly Broad Claim”, IIC Vol. 25, No. 5, 648-657.
  8. Brinkhof, JJ [1994] ‘Could the President of the District Court of the Hague take measures concerning infringements of Foreign Patents’, 8 EIPR 360
  9. Brinkhof JJ & Schutjens MDB [1996] Revocation of European Patents – study of the statutory provisions and legal practice in the Netherlands and Germany, in IIC, Vol 27 No 1, 1-25.
  10. Brinkhof JJ [1997] The Desirability, Necessity and Feasability of Co-operation between courts in the Field of European Patent Law”, 5 EIPR, 226-229.
  11. CIPA [1993] “Comments by Chartered Institute of Patent Agents (CIPA) to Price Waterhouse on the Future of the Patent Office”, CIPA September 1993, 304-329.
  12. CIPA [1994] Second Tier Protection: report and proceedings of a symposium held at Brocket Hall, CIPA, London.
  13. Cole P [1995] “Purposive Construction and the Inventive Step”, in 3 EIPR 147-154.
  14. Cook W [1997] “Judicial Review of the EPO and the Direct Effect of TRIPS in the European Community”, 7 EIPR 367.
  15. Crab E [1994] BEST Project in the European Patent Office, World Patent Information, Vol. 16, No. 3, 159-160.
  16. Dutton H.J. [1984] The Patent System and Inventive Activity during the Industrial Revolution, 1750-1852, Manchester University Press, Manchester.
  17. Eisenschitz T.S. [1985] “The Value of Patent Information” in Phillips, 1985.
  18. EC [1991] Patents as Indicators of the Utility of European Community R&D Programmes, EUR 13661 EN, Brussels.
  19. EPO [1992] European Patent Office, Annual Report, Munich.
  20. EPO [1993] European Patent Office, Annual Report, Munich.
  21. EPO [1993a] National Law Relating to the EPC: synopsis of the regulations and requirements in the Contracting States concerning European patent applications and patents, 8th Edition, Munich.
  22. EPO [1994a] European Patent Office, Tenth Anniversary of Trilateral Co-operation: symposium proceedings, Munich.
  23. EPO [1994b] Utilisation of Patent Protection in Europe: representative survey carried out on behalf of the European Patent Office Munich, Munich.
  24. EPO [1994c] “BEST – After Three Year’s Experience”, in IIC Vol. 25, No 1, 69-73.
  25. EPO [1996] European Patent Office, Directory of Professional Representatives, 17th Edition, Munich.
  26. Floyd C & Purvis I [1995] “Can an English Court Restrain Infringement of a Foreign Patent”, in 3 EIPR 110.
  27. Fox M, Calgor M.C. & Robertson A.B. [1980] Inventions from Industrial Sources, Polytechnic of Central London, School of Management Studies, Report to Leverhulme Trust Fund.
  28. Frank J [1949] Courts on Trial: myth and reality in American justice, Princeton University Press, NJ.
  29. Fujimo J [1990] “Understanding the Flood of Japanese Patent Applications”, Patent World, July/August.
  30. GAO [1993] Intellectual Property Rights: US Companies’ Patent Experiences in Japan, US General Accounting Office, GAO/GGD-93-126.
  31. Gibbons M & Georghiou L [1987] Evaluation of research – a selection of current practices, OECD Paris.
  32. Heinonen, K., [1997], ‘Translation of European Patents: package solution not the answer’, 12 EIPR 220- 223.
  33. HMSO [1983] Green paper on Intellectual Property Rights and Innovation, HMSO London, Cmnd 9117.
  34. Huydecoper, JLRA [1995] “Interpretation of patents, equivalency and invalidity defences in Netherlands patent law and practice”, in Mitteilungen der deutschen patentanwälte, 86.Jg. 65.
  35. ILPO Annual Report [1994] Netherlands Industrial Property Office, Den Haag.
  36. Jacob R [1991] “The Herchel Smith Lecture 1993”, 9 EIPR 312.
  37. Jacob, R [1996] “Industrial Property – Industry’s Enemy?”, 2nd Stephen Stewart Memorial Lecture, reprinted in [1997] Intellectual Property Quarterly 3-15.
  38. Jaenichen H-R & Schrell A [1993] “The ‘Harvard Onco-Mouse’ in the Opposition Proceedings before the European Patent Office”, 9 EIPR, 345.
  39. Kern M [1994] “Towards a European Utility Model Law: report on the Symposium of the Max Planck Institute”, IIC, Vol. 25, No 5, 627-648.
  40. Kingston W [1990] Innovation, Creativity and Law, Kluwer, Dordrecht.
  41. Kirchman J von [1994] “The Need for Utility Models – a personal view”, in CIPA, 1994.
  42. Krasser R [1992] “Possibilities of Amendment of Patent Claims During the Examination Procedure”, IIC Vol. 23, No. 4, 467-485.
  43. Laddie H [1996] “Copyright: over-strength, over-regulated, over-rated?”, 5 EIPR 253.
  44. Lees C. [1993] “A Light in the twilight zone? Proposed protection for “sub-patentable” inventions”, Patent World, November, 30 – 35.
  45. Lees C [1994] ‘Do We Need Second Tier Protection?’ in CIPA 1994.
  46. Leith P & Hoey A [1997] The Computerised Lawyer: a guide to the use of computers in the legal profession, (2nd Edition), Springer-Verlag, London.
  47. Leith P [1995] “German Legal Education: becoming a Legal Education in Germany: becoming a Lawyer, Judge, and Professor”, in 4 Web JCLI, 1995.
  48. Leonard G [1994] “Patents and Translation”, in JPTOS, August 1994, 561.
  49. Livesley R [1985] “Patent Law Reform – A Patent Agent’s Personal View’, in Phillips, 1985.
  50. Lloyd M [1986] Legal Databases in Europe, Elsevier Science Publishers, Amsterdam.
  51. Meller MN, & Valance EH [1979] Foreign Patent Practice Under the EPC and PCT, New York, PLI.
  52. Merz J.F. & Pace N.M. [1994] “Trends in Patent Litigation: the apparent influence of strengthened patents attributable to the Court of Appeals for the Federal Circuit”, JPTOS, August, . 579-590.
  53. Mokyr, J [1990] Lever of Riches: technological creativity and economic progress, Oxford University Press, Oxford.
  54. Morison J & Leith P [1992] The Barrister’s World: and the nature of law, Open University Press, Buckingham.
  55. Needle J [1993] “Is National Patenting Outmoded?”, Patent World, June 1993, 21-28.
  56. Nelkin, D [1984] Science as Intellectual Property: who controls research?, Collier MacMillan, London.
  57. Neukom J.U. [1992] “What Price the Community Patent”, 4 EIPR 111.
  58. Nordhaus W.D. [1969] Invention, Growth and Welfare: a theoretical treatment of Technological Change, MIT Press, Cambridge, Mass.
  59. OFT (Office of Fair Trading) [1986] Review of restrictions on the Patent Agent’s Profession, London.
  60. Oudemans G [1963] The Draft European Patent Convention, Stevens and Sons Ltd, London.
  61. Paterson, G [1992] The European Patent System: the law and practice of the European Patent Convention, Sweet and Maxwell, London.
  62. Phillips J. [1984] Charles Dickens and the ‘Poor Man’s Tale of a Patent’, ESC Publishing, Oxford.
  63. Phillips J. [1985] Patents in Perspective, ESC Publishing, Oxford.
  64. Phillips J [1990] “Time to Close the Patent Office Doors?”, 5 EIPR 151.
  65. Rose C.M., [1994] Property and Persuasion: essays on the history, theory and rhetoric of ownership, Westview, Boulder.
  66. Sanders B.S., Rossman J & Harris L.J. [1958] “Some difficulties in Measuring Inventive Activity”, Patent, Trademark and Copyright Journal, 1958.
  67. Scordamaglia, V [1990] ‘The Prospects for the Community Patent and in Particular the Common Appeal Court Following the Luxembourg Conference”, Lecture given at the EPO, 20th February 1990, EPO, Munich.
  68. Sherman B [1991] “The Patentability of Computer-related Inventions in the United Kingdom and the European Patent Office”, 3 EIPR 85.
  69. Skularikas Y [1994] Annex regarding experience made when examining in particular Artificial Intelligence (AI) or Neural Network (NN) cases, EPO, Munich.
  70. Stephenson J [1982] “The Use of Patent Information in Industry”, 4 World Patent Information, 164-171.
  71. Taylor C.T. & Silberston Z.A. [1973] The Economic Impact of the Patent System: a study of the British Experience, Cambridge University Press, Cambridge.
  72. Taylor C.T. [1973a] Do We Still Need a Patent System, CIPA, London.
  73. Tootal C [1994] “Second Tier Protection”, 12 EIPR 511.
  74. Turkevich, L.R. [1995] “An End to the ‘Mathematical Algorithm’ Confusion?”, in 2 EIPR 91.
  75. Turner B [1992] “The German Formstein Case: an alternative harmony”, 5 EIPR 181.
  76. H.Ullrich [1977], Standards of Patentability for European Inventions: should an inventive step advance the art?, ICC-Studies Vol. 1, Max-Planck-Institut, Munich.
  77. Van Benthem J.B. [1993] The European Patent System and European Integration”, IIC Vol. 24, No. 4, . 435-445.
  78. Vivian M [1993] Leberl Study, in Mitteilungen der deutschen patentanwälte, 84.Jg. 204.
  79. Weatherald KB [1993] “The European Qualifying Examination: A Review”, in Mitteilungen der deutschen patentanwälte, 84.Jg. 238
  80. Webb A [1991] “Patent Litigation in the UK – the new Patents County Court”, in 6 EIPR 203.
  81. White A.W. [1993] “The Function and Structure of Patent Claims”, 7 EIPR 243.
  82. Wittman A, Schiffels R & Hill M [1979] Patent Documentation, Sweet and Maxwell, London.
  83. Wittman A [1994] Classifying and Indexing of Patent Documents – a retired patent documentalist looks back, World Patent Information, Vol. 16, No. 4, 233-235.
  84. Woods G [1993] “Training in Directorate General 2”, in Mitteilungen der deutschen patentanwälte, 84.Jg. 204.
  85. Woods G., Lantsheer, C., & Clark R.E., (1997), “A Strategy for Focusing Learning on Customer Service: an example from the public sector”, in Proceedings of ECLO Conference, 1997.
  86. Würtenberger, G [1993] “Interlocutary Injunctions against Patent and Utility Model Infringements in Germany”, EIPR, Vol. 15, No. 2, Feb 1993
  87. Wyatt G [1986] The Economics of Invention: a study of the determinants of inventive activity, Wheatsheaf Books, London.

SOURCE: Harmonisation of Intellectual Property in Europe: a case study in patent procedure BY Philip Leith
Queen’s University of Belfast-1998-First published by Sweet and Maxwell as Vol 3 in their Perspectives on Intellectual Property series-1998- Copyright remains with the author.

%d bloggers like this: