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Patent Subject Matter Eligibility: A Global Guide

Patent Subject Matter Eligibility: A Global Guide

Author: Paul W Browning; Christopher C Johns; Sara A Leiman
Publisher: Globe Law and Business
ISBN: 9781787424463
Published In: October 2021
Format: Hardback , 304 pages
Jurisdiction: International ? Disclaimer:
Countri(es) stated herein are used as reference only

List Price: HKD 2,275.00

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Description
Contents
Reviews

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.

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

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 Sharma, Director, 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 Sudan, Head Intellectual Property, TATA STEEL Ltd