Something to read, Part I

As a friend and fellow-blogger, Peter Groves can expect a kind review from tytoc collie.  On the other hand, the selfsame Kat came quite close to publishing an IP dictionary of his own with the same publisher (Edward Elgar Publishing) -- but pulled out of the project after he became convinced that there was no need for a printed volume of definitions in an era in which it was quicker and easier to enter a term in a search engine than to put down one's comforting mug of tea and reach for the bookshelf.  Anyway, a copy of the book in question is before the Kat at this very minute and he has been curiously turning the pages.

But first let's look at the publicity material which attended its launch:

"From 1-click and the ActionAid Chip to zwart maken, Peter Groves’ Dictionary of Intellectual Property Law' (Edward Elgar, 28 February 2011, £70) provides IP professionals and other interested parties with over 1,000 definitions covering most of the expressions that they might encounter. ...

... [T]o say that there is widespread ignorance about intellectual property is a massive understatement. What is said and written on the subject is more urban myth than solid legal understanding. Ordinary people – those who aren’t IP professionals – often have a hard time telling patents from trademarks from copyright. Many lawyers don’t know the difference, either. There’s no dictionary of intellectual property law to tell them what the words and expressions mean… until now. Peter Groves, a solicitor with 30 years’ experience of intellectual property, several books and many articles to his credit, and hundreds of hours of lecturing under his belt, has spent much of the last few years putting one together. 

Intellectual property has a vast, perplexing and diverse vocabulary, and this enriching Dictionary provides a starting point for understanding new concepts and crafting precise definitions to meet the needs of a particular case. Not only are new words and phrases being coined as technology changes and the law follows, but also the international scope of intellectual property means that IP lawyers will encounter foreign words and phrases. 

With over 1,000 expressions defined clearly and entertainingly, this book should be the first reference point to understanding intellectual property terminology. It will be particularly helpful to practitioners when they encounter expressions they have not seen before which they need to understand the true meaning and definition of. Students finding unfamiliar terminology and concepts will also appreciate the instant explanation available from this essential resource. ...".

Naturally there are omissions. 'Nerd' fails to gain an entry, notwithstanding the consideration of this word by Lords Justices Jacob and Pill in the patent appeal of Rockwater v Technip (here).  This is a pity, since one noble judge has been heard to express the notion that the definition of 'nrrd' is "the sort of person who looks up the word 'nerd' in a dictionary".  Nor, despite its recent appearance in the Patents County Court, does 'numpty' feature.  The 'moron in a hurry' is there, of course, as is that design law chameleon 'the informed user'  (only in IP is there likely to be serious speculation as to who might be the 'informed user' of a toilet bowl).

This reviewer found only one important error.  The entry under IPKat describes him has "the doyenne of intellectual property blawgs".  Doyen, if you don't mind, says the Kat -- Merpel's the doyenne!

Bibliographic data: hardback,  . ix + 336 pages. ISBN 978-1-84980-777-7. Rupture factor is not defined. Price: £70 £105.50-- but you can buy it for just £63  £94 from the Edward Elgar website here. (the publishers must have liked the review so much that they hiked the price!).


Published last year (also from Edward Elgar Publishing) is Beyond Intellectual Property: Matching Information Protection to Innovation, by IPKat team member Jeremy's old colleague William Kingston (School of Business, Trinity College, Dublin, Ireland).  Having been quite merciful to Peter Groves' Dictionary on account of long and pleasant acquaintance, this Kat wondered whether he should be equally kind to the King: after all, while they have shared a number of affable conversations and pleasant events over the year, the Kat is a firm believer in the virtues of a patent system which the King would be quite willing to demolish in favour of something that works better. According to the publisher's promotional prose,

"Beyond Intellectual Property explores the many means by which information is protected. Based on thorough empirical research in the US and Europe as well as practical experience of economic innovation, it goes far beyond the traditional realm of intellectual property (IP). It also identifies the need for urgent reform of present arrangements and suggests practical ways of achieving this.

New instruments for protecting investment in information have been historically important for initiating long-wave economic cycles. William Kingston argues that although IP has been one such method, it is increasingly proving ineffective because its laws have been progressively shaped by the interests that benefit from them, rather than by visions of the public good. He demonstrates that repair will require such visions, which would also underwrite radically new forms of information protection.

This insightful book defines, describes and distinguishes between information, knowledge and meaning, and explains why information now needs changed forms of legal protection if it is to be of genuine economic value. As such, it will be of great interest to economic policy-makers, students of IP and innovation, patent agents and attorneys".

Professor Kingston's position that IP law has been "progressively shaped by the interests that benefit from them, rather than by visions of the public good" is one with which we can endlessly debate. If you take the utopian position that everyone benefits from those laws, the statement is true but meaningless -- yet if you don't, you have to define both what constitutes the interests in question and the concept of the public good.  This is no idle debating point either.  If you take trade mark law, for instance (and this book tackles information as well as innovation), it is correct to say that the law has not been progressively shaped by the interests of the consumer, but does the consumer benefit in informational terms from the same things that enable the mark's proprietor to benefit in commercial terms?  And has not IP law been more shaped by pressures of competition/antitrust law in the past few decades than by any considerations of self-interest?

Love it or loathe it, this book is well worth a read.  The author has been around the block a few times and knows how to state his positions and how to defend them.  If your definition of an interactive book is one you can respond to and, if you're a dyed-in-the-wool IP fan, have the occasional shout at, this is the book for you.

Bibliographic data:  hardback,. viii + 247 pages. ISBN 978-1-84844-992-3. Rupture factor: small. Price £65 (from the publisher's website £58.50).

Book reviews

Apart from the light-bulb symbolism
on the cover, this book has much
to commend it to the busy reader

tytoc collie has been perusing the second edition of Essentials of Intellectual Property, by Alexander I. Poltorak and Paul J. Lerner (both of General Patent Corporation).  Given the versatility and indeed the enthusiasm of the pair, it is unsurprising that the book's cover bears the subtitle 'Law, Economics and Strategy', these being but three of the many disciplines which the authors illuminate for the business reader (they can do algebra too, but 'Law, Economics, Strategy and Algebra' might be a bit too off-putting for the target readership).

Since this book has emerged nearly a decade after the first edition, it has been treated to a major update. Considering that the years since 2002 have seen such momentous activity -- the death or obsolescence of many classic business models, the rise of trollism, the combined opportunities and threats of the internet, the Doha dilution of pharma patent expectations, direction-changing Supreme Court rulings like eBay v MercExchange as well as shifts in legal and commercial perspectives resulting from Bilski and the current raft of litigation over false patent marking, to name but a few -- it would have been impossible to avoid a big rethink.

But whatever the changes, the things that remain the same have to be rammed into the reader's consciousness and it is the virtue of this book that it does just that.  Go where the money is, be prepared to share in order to grow, check how much protection you need in order to fulfill your objectives, watch out for your own liability as well as that of others -- these are among the messages that the author transmit.  For the record, this new edition includes

• Latest changes to patent law and IP best practices;
• Two all-new chapters, one on recent patent reform legislation and a second on precedent-setting lawsuits;
• Basics of patents, trade marks, copyrights, trade dress and trade secrets, specifically written for busy executives
• Methodologies of patent valuation;
• DOs and DON’Ts of patent enforcement;
• Samples of useful documents, eg a non-disclosure agreement, invention assignment form, invention disclosure form and IP audit questionnaire.

It's not a law textbook -- but it is a fun read and a very informative one. In the olden days this Kat would have taken it to read cover-to-cover on a long flight, but nowadays it takes so long to get through security that he could probably read most of it then.  The algebra is near the end, so you can pretend it isn't there ...

Bibliographic data.  Published by John Wiley & Sons, Inc. Paperback. xxviii + 292 pages. Price: US$ 45. ISBN 978 0 470 88850 6. Available also via Amazon.com in Kindle format and via Barnes & Noble as a NOOKbook. Rupture factor: no problems.

From Bloom to Bloomsbury -- it's IP in Ireland

Not a second edition this time but a third, and also not a moment too soon, is Intellectual Property Law in Ireland, crafted by a talented trio of tytoc collie's friends -- distinguished academic Bob Clark, plus that amiable pair of practitioners from FRKelly, Shane Smyth & Niamh Hall.

Only six years after its predecessor, this edition has had to run very fast to keep up with events.  The rapid unfolding of developments in the European Union and its Court of Justice, the Irish version of the "three stripes" saga and some bonny battles over fashion design have provided some of the reasons for this need. Anyway, according to the publisher's blurb, 

"This is your single-source expert guide to intellectual property law. fully updated to the key changes that have taken place in this area of law since the publication of the 2nd Ed in 2005, together with all relevant case claw. 

This unique book deals with intellectual property law in its entirety, providing a single, practical and all-embracing information source covering the main aspects of intellectual property law. The expert coverage includes copyright, trade marks, patents and design law".

tytoc collie feels that the publishers could have done a bit better than this.  They could have pointed out that there is an increasingly significant body of reported Irish IP law these days. They could have added that, while much of the past tense of Irish is made up of British precedents, and an even larger proportion of its future tense is European, Ireland is very much its own country with its own style and tempo of dispute resolution, its own approach to administration and official procedures, its own interpretative nuances, its own professions and its own domestic market.  The authors have worked hard to provide a reference work which is readable, accessible and -- for the reader who frets over whether European norms of protection and enforcement are adequately implemented -- increasingly reassuring.

Bibliographic data:  Hardback.clvii + 1080 pages. Price  €180/£150. ISBN 978 1 847 66366 5. Book's web page here. Rupture factor: severe (particularly for leprechauns ...)

More trade mark practice laid bare

This Kat has been reviewing Amanda Michaels' (and Andrew Norris') book "A practical approach to Trade Mark Law". Already in its fourth edition the book offers 417 pages of UK trade mark law for the reader's delectation. In earlier editions called "A Practical Guide" the book is now part of OUP's 'A Practical Approach' series, which explains the change of title. The book's author Amanda Michaels is a barrister, who is, inter alia, known for her trade mark expertise. She is also an Appointed Person hearing appeals from the UKIPO. Contributing author Andrew Norris is also a barrister as well as an IP tutor - and all this knowledge and practical experience is reflected in the clear layout of the book and its non-fussy writing style.

In its 9 chapters the book covers the major trade mark law issues in a logical order: information about the trade mark system and the functions of trade marks in Chapter 1 is followed by a discussion of registrability in Chapter 2 and relative grounds of refusal in Chapter 3. Chapter 4 covers the procedure before the UKIPO in some detail as well as the procedure before OHIM and it also includes a brief overview of the Paris Convention, TRIPS and the Madrid Protocol. The book does not however discuss the Madrid System in detail. Chapter 5 sets out revocation and invalidity procedures before the UK IPO and OHIM, Chapter 6 informs the reader about the assignment and licensing of trade marks. Chapter 7 explains the UK provisions relating to trade mark infringement and the relevant defences. Chapter 8 is a definite highlight of the book with its precise and logical explanation of passing off, covering everything from the "classic form of passing off" as defined in Jif Lemon to Spalding v Gamage, as well as perennial issues such as "foreign","residual" and "shared" goodwill, celebrity endorsement and providing an understandable(!) explanation of "reverse passing off" on just half a page. Equally succinct is the discussion of "innocence, fraud or a decision to live dangerously" - again set out on just about one page of the book but feeding the reader all the relevant "sound bites". The last chapter (Chapter 9) then turns to "remedies and procedures for trade mark infringement and passing off", including the criminal provision of the Trade Marks Act and the related court procedures: this chapter provides a good overview of the main issues without going into too much detail. The information on the Company Names Tribunal is equally short but alerts you to the main points.

This being a book for practitioners, the authors have intentionally kept the book compact and digestible. Case law is included until early 2010 (including Comparative Advertising/L'Oreal Bellure and everyone's favourite: "AdWords"- albeit not the very latest cases for obvious reasons); and while the book reports about the relevant case law handed down by the ECJ, GC and the UK courts and distills the most important points, it rarely (and I would assume intentionally) discusses or criticises these decisions in much detail. And of course, there are other books readers can revert to for a more in-depth discussion and review of the case law. The book also incorporates the latest round of renumbering of Articles, such as those of the CTMR.

So what is missing or could be bettered? Given its practical approach the authors could consider including "checklists" concerning matters such as trade mark strategies, the question of likelihood of confusion, what to include in an assignment or licence document, etc. Perhaps some more information could be provided on co-existence agreements (what should be covered, is it always a good idea to have one) and the related issue of granting consent. The book also includes rather extensive appendices: the Trade Marks Act 1991, Directive 2008/95/EC, Council Regulation (EC) 207/2009, and the Trade Mark Rules 2008 are all printed in their entirety. This Kat is not quite certain that these texts add much value to the book, in particular since she herself likes to have the law text next to the reference book rather than having to thumb back and forth. Others, however, may be delighted to have all relevant information in one handy book: a matter of personal taste.

Now, is it the book for you? This book works on several levels and for readers with different backgrounds: whether you are trainee trade mark attorney who is trying to find his/her way, a part-qualified trade mark attorney or a qualified trade mark practitioner - you will find the book useful. As one of this Kat's friends has put it, the book has an understandable "non-pompous" writing style so that you can pick it up at different points in your career and be comfortable with it. Having "road tested" this book for quite some time, this Kat believes that for trade mark practitioners this is the kind of book you will use if you come across a problem in your day-to-day practice and need a quick refresher to remind you of the most important points. Sometimes further reading will be required to get to the nitty gritty details but the carefully researched footnotes will make this an easy endeavour. For students and trainees it will serve as a very solid and surprisingly comprehensive reference (and revision) book which - at a prize of under £45 - will give you a sound grounding in and understanding of UK trade mark law and practice. It might also work as basis for students' revision notes for the (current) ITMA exams. Indeed, its handy size makes it ideal for revising during your daily commute and it is affordable enough for students to be able purchase it without having to think twice. If you are a trade mark practitioner and/or trainer, or a patent attorney/lawyer (who perhaps only deals with trade mark matters on occasion) then this book is certainly a book worth having on your shelf in the office. The book may also be of interest to foreign trade mark professionals that have UK connections.

Bibliographic information: publication date 2010, 4th edition, 464 pages, paperback, ISBN 978-0-19-957968-6, Oxford University Press. More details here.

Rapture factor: relatively high - but this is a book that wants to be used.

German trade mark case law laid bare - again

This Kat has been reviewing German trade mark scholar and practitioner Dr Ulrich Hildebrandt's book Marken und andere Kennzeichen. Already in its second edition the book offers 782 pages of (predominantly) German trade mark law for the reader's delectation. (See here for tytoc collie's short review of the 1st edition.)

This book is not only of a similar size to Kerly's Law of Trade Marks and Trade Names, it is also similar when it comes to the breadth of information covered. On its 782 pages Marken und andere Kennzeichen (in English: "trade marks and other trade signs") offers in-depth information about German trade mark law, including the law on business names, work titles (Werktitelschutz, a German law quirk), domain names, indications of geographical origin as well as helpful overviews of the relevant provisions of neighbouring areas of the law, such as competition law and delict, the German equivalent of tort, comparative advertising. The book consists of 8 parts and 36 individual chapters and is very clearly structured so that the reader can "jump" into the individual chapters and read up on particular matters. It is very much a practitioner's book and geared towards use in every day trade mark practice, so that students may find it a little less engaging and too detailed for their studies. Having said, if you are a student and plan to specialise in this field of the law, the book might give you some idea what you will be facing in every day practice.

Marken und andere Kennzeichen includes the German Bundesgerichtshof's precedents in trade mark matters since 1994 as well as a very comprehensive selection of decisions from the ECJ (or is it CJEU these days?!) and the General Court. Dr Hildebrandt is very much aware of the influence of the ECJ's case law and so the relevant chapters include summaries of the ECJ's line of precedents in the respective field. He also shows the discrepancies between the ECJ's and GC case law and the German Federal Supreme Court and gives helpful tips as to how to proceed in practice. The author also ventures into providing some outlook into how the law may develop further, always making it clear when something is his a personal opinion.

A concise table of contents, a useful index and a comprehensive table of cases and many examples makes this book accessible and easy to work with and its writing style is surprisingly engaging. Dr Hildebrandt has included helpful "checklists" concerning the conception of marks, trade mark strategies, regarding trade sign practice, the question of likelihood of confusion and dealings with customs authorities. It also alerts you to the DPMA's usual practice when it comes to deadlines. Of particular interest for non-German readers will be the chapter on domain name disputes in Germany, which have to be conducted in front of the courts, and the chapter on work title protection and company name protection and the information on disturbance liabality. This second edition of the book covers more recent developments, such as the amendments to the law for improving intellectual property rights (Gesetz zur Verbesserung der Durchsetzung von Rechten des geistigen Eigentums) and "sexy" topics, such as the (German) case law on AdWords and domain name disputes.

Being first and foremost a handbook of German trade mark law, the information on Community trade marks and International mark is nonetheless accomplished albeit a little too short for my taste - admittedly I had to look hard to find something to criticise. While the information provided does not guide the reader through these types of trade mark proceedings in every last detail, chapter 28 "proceedings before OHIM" (Verfahren vor dem Harmonisierungsamt) covers all the important points to look out for in every day practice, including questions as such how to pay the official fees and procedures before the Board of Appeal. Like the rest of the book, this chapter includes comprehensive footnotes with references to case law and tips for further reading.

So, is the book for you? If you are a German trade mark practitioner, represent German clients or if you are a (German) lawyer who has to deal with (German) trade mark matters only on occasion then this book is certainly a book worth having on your shelf in the office (or your desk really). It is well written and concise despite the amount of information covered. One caveat however and you will have guessed this by now - you should be able to read German to a very high standard….

Bibliographic information: publication date 2010 (that is what it says in my copy) 2nd edition, 282 pages, hardback, ISBN 978-3-452-27152-5, Bücher Carl Heymanns Verlag, 128 Euros.
Rupture factor: negligible.

Further details can be found here.

“Intellectual Property and the Safeguarding of Traditional Cultures": a review

Feeling cultural, or even a bit traditional?  A new World Intellectual Property Organization (WIPO) publication “Intellectual Property and the Safeguarding of Traditional Cultures: Legal Issues and Practical Options for Museums, Libraries and Archives” was launched late last year.  The press release announcing it drew this comment from tytoc collie, but he didn't have the chance to read and carefully review it.  The Kat therefore thanks a kind and enthusiastic reader, Ann-Gaelle Cox, for reviewing it for the benefit of us all.  Explains Ann-Gaelle:

"This recent WIPO publication provides a comprehensive overview of the various intellectual property issues arising out of the creation and treatment of traditional cultural expressions (“TCEs”) – typically creative works emanating from indigenous peoples and communities (“tradition-bearers”), such as Australian Aboriginal artists. The protection of such works poses particular challenges for cultural institutions and indigenous communities alike, the principal problem being that the existence and ownership of IP rights in such works are far from clear.
The publication is structured as follows: first, an overview of the various legal and practical issues, followed by an analysis – from an international perspective - of relevant IP rights (in particular copyright), as applied to areas of specific concern to cultural institutions such as museums. It concludes with a number of examples of good practice from institutions and communities around the world. 

Why Are TCEs An Issue? 

In general, TCEs are not “created” in the traditional IP sense: typically, they arise through custom and practice, often as a result of community – rather than individual – contributions. Also, they tend to evolve, sometimes over a long period of time. Because it is difficult, if not impossible, to ascertain exactly what was created, when and by whom, TCEs do not neatly fit the traditional IP creation–ownership matrix. 

Thus cultural institutions frequently find themselves at the centre of a complex puzzle of overlapping rights. Museums need to showcase TCEs as part of their usual cultural heritage activities, but they run the risk of offending tradition-bearers if they do not involve them proactively. While recent technological developments (such as digitisation) provide exciting opportunities for museums, they also create new challenges in terms of IP rights management.
Nevertheless, in spite of this complex environment, cultural institutions around the world are developing impressive new practices and techniques for dealing with TCEs, while taking into account ethical and cultural sensitivities. 

Legal Background 

While it can be said that IP rights are relatively well-defined, TCEs are, by their very nature, open-ended and perhaps impossible to define. Typical examples include a folk tale, a ritualistic dance, or an incantation. As the publication illustrates, for various reasons, IP law provides little or no protection for TCEs per se. Yet tradition-bearers usually see themselves as rights-owners or “custodians” of TCEs. In reality, they are often “legally disenfranchised” from their creations.
Currently, no international legal framework exists to deal with TCEs and IP rights, although various conventions (in addition to some national IP laws) seek to protect TCEs (eg. the 2007 United Nations Declaration on the Rights of Indigenous Peoples). 

The debate is not limited to legal issues. Cultural and ethical considerations bear equal, if not greater, weight. For instance, when it comes to managing disputes involving TCEs, litigation is a poor tool when compared to Alternative Dispute Resolution. One reason is that litigation is largely confrontational; more importantly, it tends to focus on the establishment and protection of legal rights, to the detriment of customary law and practice, both of which can be important factors where TCEs are concerned. 

Copyright 

Although copyright is arguably the most relevant IP right in the TCE context, its application is limited – indeed, in many cases, a TCE will not be protected by copyright. Thus TCEs run the risk of being treated as “public domain”, or considered works of unknown authorship or orphan works. Some argue that a new sui generis right should be created to protect TCEs. 

One of the principal limitations of copyright law as far as TCEs are concerned is the requirement for originality. In many jurisdictions, the threshold for originality is rather low, such that a secondary or derivative work will often attract copyright, whereas the original TCE itself is deprived of protection. An example of this would be a film based on an oral legend. Other significant limitations are fixation (a requirement in some jurisdictions), and the idea/expression dichotomy (copyright protects the expression of an idea, not the idea itself). Yet TCEs often reflect ideas, meanings, beliefs, etc. more than anything else; they are not limited to mere expression. 

Authorship-ownership questions also raise complex issues. Generally speaking, TCEs are not the product of one author – rather, they are the result of an ongoing creative process, to which members of a wider community contribute. The inability to ascertain one or more authors (and therefore, owners) has significant drawbacks under copyright law. Alternatives, such as treating TCEs as orphan works, may - depending on the jurisdiction – mean that they are subject to a compulsory licensing regime, or that they can be freely used (assuming a diligent search for the author is fruitless). 

Further, the usual copyright exceptions and limitations are arguably of limited value in the TCE context. For example, the notion of “fair use” or “fair dealing” may simply not be appropriate, especially where TCEs are in some way sensitive or sacred. 

Moral rights will sometimes be relevant, and may enable tradition-bearers to impose limitations and conditions on the use of TCEs, or to object to certain treatment. For instance, moral rights may be used to control the digitisation of TCEs by cultural institutions (eg. the creation of thumbnails – digital copies in miniature format). 

It is important to note that the needs and demands of cultural institutions in relation to TCEs are increasingly complex. As well as exhibiting TCEs, museums carry out preservation, restoration and archiving activities. In particular, digitisation is a challenge, especially when TCEs in digital format are then made available via the Internet. Mass dissemination inevitably increases the risk that tradition-bearers will be offended (if, for instance, prior consent is not obtained), and that users may misuse such TCEs. 

Other Forms of IP Protection 

The publication also considers the application of trade marks, geographical indications and domain names to TCEs, albeit in less detail. As regards trade marks for instance, problems may arise when TCEs are made into logos. Similarly, registering (as a trade mark) the name of TCE is likely to be an issue. 

Good Practice 

The publication concludes with a round-up of current good practices relating to the management of TCEs, by both cultural institutions and traditional communities. A WIPO database of existing IP-related protocols, policies and practices has been compiled for further reference and is accessible online. Examples of good practice include the principle of “prior informed consent” (eg. when researchers collect TCEs), the handling of digital archives (eg. the British Library’s policy statement regarding its archive of sound recordings), and conditions of access to online documentation (eg. the Musée du Quai Branly’s website). As far as traditional communities are concerned, steps are being taken to protect and control TCEs pre-emptively, for instance through protocols, standard agreements, consent forms, undertakings, etc. 

What Next? 

This publication is one of a number of current WIPO projects. Following on from the related WIPO Intergovernmental Committee (“ICG”) set up in 2000, several WIPO working documents are in progress. The ICG plans to submit new legislative texts in this area in 2011".

Intellectual Property and the Safeguarding of Traditional Cultures – Legal Issues and Practical Options for Museums, Libraries and Archives, WIPO (Molly Torsen and Jane Anderson), 2010, can be downloaded here.

Standards and strategies: two books in review

Patents and Industry Standards, by Jae Hun Park (Korean Intellectual Property Office, Korea), is a relatively slender book on a subject which is immense and simply keeps expanding. According to the increasingly adventurous IP publisher Edward Elgar Publishing,

"This insightful book reviews the inherent conflict between patent rights and industry standards and through analysis of both US and European case law proposes measures to improve current systems and foster greater innovation.

Jae Hun Park searches for the appropriate balance between the rights of patent owners and the need for industry standards within the scope of patent law. He considers the current solutions provided by legal systems and using cost–benefit analysis evaluates, from a legal and economic perspective, whether patent systems can be improved. [Plot spoiler:] Jae Hun Park proposes reform to the patent system that would introduce a ‘dynamic liability rule regime’, rather than ‘property rules’.  The ‘dynamic liability rule regime’ adopts property rules at the stage when there are still competing standards, and liability rules at the stage when there are no competing standards. This would, he argues, resolve the conflict between patents and standards and mitigate the patent hold-up problem.

This is a must-read book for scholars interested in technology patents, innovation and competition law and policy, as well as those individuals working in standard setting organisations. It will also be of great interest to patent offices, patent attorneys and competition lawyers".

This member of tytoc collie team has been doing quite a bit of reading and thinking about the conflict between patent rights and industry standards, within the rather different context of the impact of standards setting bodies on the balance between proprietary technology and the public domain. He is in awe of the amount of reading that the author has done; his ability to extract the pips from some of his economics reading and keep to nothing more intimidating than Venn diagrams was also greatly appreciated.  If he has a reservation, it is that he feels that the author has worked hard to find a solution to something that the reviewer is not convinced is actually a problem.  The variety of industry standards and the speed at which they have evolved and continue to transform themselves suggests that we watch and see whether genuine and insoluble problems do indeed exist before we change our relatively tolerant, ad-hoc, after-the-event approach to them.

Bibliographic information: publication date 2010. xiii + 238 pages. Hardback. ISBN 978 1 84980 011 2. Price £65 (with publisher's online discount £58.50). Also available as an ebook, ISBN 978 1 84980 548 3. Web page here. Rupture factor: slight.

Intellectual Property and Competitive Strategies in the 21st Century (2nd edition) by Shahid Alikhan, R. A. Mashelkar, comes highly praised by publishers Wolters Kluwer, in whose Law & Business series this is published.  The authors are Shahid Alikhan, who is described in all modesty as "a highly distinguished elder statesman in the field of intellectual property". His career appears to have been that of an IP diplomat, having served as Deputy General of the World Intellectual Property Organization.  His fellow author, Raghunath Mashelkar, is billed as "one of the world's outstanding chemical engineering scientists", a Fellow of the Royal Society and the holder of 26 honorary doctorates.

According to the publishers:

"It is scarcely five years since the first edition of this book, a milestone in the strategy-oriented approach to intellectual property at the global level, appeared and was quickly and widely welcomed as virtually an intellectual property agenda for the 21st century. This second edition includes a judicious update of the original data and analysis in light of the significant movement forward that has taken place over the past few years in many of the critical areas that shape the competitive strategies in the use of IP Rights. The authors have lost none of their conviction of the necessity to enhance awareness of the techno-economic effects of intellectual property rights protection on enterprise competitiveness and national growth and development.

The book provides a panoramic but detailed view of the world’s intellectual property system that embraces socioeconomic, cultural and technological development in its scope, clarifying the pitfalls and challenges that the system presents even as it promises to improve the quality of life on our planet. The authors both internationally respected and honoured for their work in elucidating the economic necessity of an intellectual property system that can inspire universal confidence, emphasize the imperative of international competiveness in knowledge-based technology.... 

... for its richly detailed treatment of trends and current reality in the field, this new, updated edition of Intellectual Property and Competitive Strategies in the 21st Century will continue to be read and put to good use by business people, international lawyers, government officials, and interested academics in all parts of the world".

With so much praise provided by the publisher, this book needs no further praise from tytoc collie. Nor will it receive any. He opened it with some trepidation, having somehow incredibly missed the first edition when it exploded on an unsuspecting world.  Nor, since its publication, has he heard anyone even mention it. Could this be some conspiracy, perhaps, to conceal its presence from him?

In truth, this is a modest little book, not so much as an agenda for the 21st century as a simple introduction for beginners, a book written (it appears) by authors whose familiarity with competitive strategies is derived from reading what others have written on it. Feted as a milestone, it is more of a molehill: it is in many places a collection of muddled generalities, of generally unexceptionable sentiments and of unassailable truisms. Nor is it clear as to who is expected to read it. Are the authors talking of strategies for international agencies, for special interest groups and lobbyists, for businesses or for individuals?  The publishers have done this book and its authors no favours by puffing its importance beyond all credibility.  Had it been entitled something like Some General Reflections on the Role of Intellectual Property, it would have deserved more respectful treatment.

Bibliographic details: published 2009. Hardback. xiii + 221 pages. ISBN: 9789041126443. Price: $119.  Book's web page here. Rupture factor: slight.