Law Intellectual Property / Patent / Copyright Intellectual Property

Patent Subject Matter Eligibility: A Global Guide

Edited by Paul W Browning · Christopher C Johns · Sara A Leiman
Globe Law and Business October 2021

Specifications

ISBN-13
9781787424463
Publisher
Globe Law and Business
Publication
October 2021
Format
Hardback , 304 pages
Jurisdiction
International ? Countri(es) for reference only

Details

Patentees file applications in more and more countries every year, with nearly four million PCT applications filed since the Patent Cooperation Treaty came into force in 1978. Yet prosecuting patents in different countries can be challenging. Each country has its own laws for pursuing patent applications and achieving enforceable patents, and local patent law varies widely on the issue of patent eligibility.

This title explores patent-eligible subject matter across major jurisdictions and technologies. With succinct discussions of case law, patent office practices, and practical prosecution strategies, this guide is intended to help patent practitioners determine where to consider filing applications, the risks and benefits of certain claim types and language, and how to increase the strength of their clients’ global patent portfolios.

The varying case law and eligibility issues relating to electrical, computer, biological, pharmaceutical and chemical arts in a variety of jurisdictions will be covered, as well as relevant statistics and key topics such as the impact of new technology in this field.

Written by experts in their respective jurisdictions, countries featured in this title include:

  • China;
  • the European Patent Office, including separate sections on France, Germany, and the United Kingdom;
  • India;
  • Japan; and
  • the United States.

Knowing the prior art and having definite claim language is not always enough to obtain strong patent claims. It is therefore crucial to understand the differences in patent eligibility in different countries. With the costs necessary to file and prosecute a patent in each country, practitioners and patentees alike will appreciate this book to assist in understanding which types of applications have the best chance of success.

Table of Contents

Introduction
Paul W. Browning, Christopher C. Johns & Sara A Leiman, Finnegan
Australia
Canada
China
Chong He
Yan Li
Claire Wang, Wenwen Wang & Helena Yuan, Advance China IP Law Office
EPO
Victoria Barker, Luigi Distefano, Nicholas Fox, Yelena Morozova & Maeve O’Flynn, Finnegan, London
France
Eric Denjean & Vincent Pons, Laurent Charras
Germany
Markus G Müller, Hoffman Eitle
United Kingdom
Victoria Barker, Luigi Distefano, Nicholas Fox, Yelena Morozova & Maeve O’Flynn, Finnegan, London
India
Durgesh Mukharya, K&S Partners
Israel
Japan
Tsuyoshi Miura & Masaru Nakajima, Seiwa Patent & Law
South Korea
Taiwan
Roger Chang, Lee and Li
United States
Paul W. Browning, Christopher C. Johns & Sara A. Leiman, Finnegan
Conclusion
Paul W. Browning, Christopher C. Johns & Sara A. Leiman, Finnegan

Reviews

A great compendium of subject matter eligibility requirements across various jurisdictions and a handy reference for developing a prosecution strategy across jurisdictions for inventions in a given technical domain.

 

- Nitin SharmaDirector, Engineering and Patent Counsel, Qualcomm India

A Global Guide on Patent Subject Matter Eligibility offers a consolidated, practical and instructive framework on varying patent eligibility criteria in different jurisdictions. The content is presented in very easy to grasp fashion and would act as ready reference for day to day patent drafting and prosecution matters. A must read for every IP professional.

 

- Munish SudanHead Intellectual Property, TATA STEEL Ltd

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