JEREMY'S LLM READING LISTS

Objectives

The syllabus for Industrial and Intellectual Property Law is made up of several different subjects, each with its own structure, function and parameters of commercial application. This lecture course could not meaningfully cover the entire syllabus, even if it were considered desirable for it to do so. The objectives of the syllabus are, therefore, of necessity quite different to the objectives of the lecture course.

The objectives of the syllabus are

1. to describe and explain the dynamics of intellectual property (IP) as a tool used in commerce;

2. to trace the relationship between IP laws - which confer and protect monopoly rights - and competition laws which restrict or prohibit the use of those rights;

3. to practise techniques of reading and interpreting statutes in the context of (a) their use in the implementation of policies of harmonising national laws and adhering to international norms and (b) applying statute law to factual situations which were not imagined at the time the law was enacted;

4. to inculcate a deep understanding and keen enthusiasm for the subject.

Teachers and teaching

If you want an education, come to the lectures. This lecture syllabus has been devised by Jeremy Phillips and is largely taught by him. When Professor Phillips is unable to take a class, an appropriately qualified substitute will lecture in his place. Since he is a Visiting Professor and cannot easily be contacted at Queen Mary or indeed elsewhere, it is strongly recommended that messages be sent to him at his email address jjip@btinternet.com or through his weblog www.ipkat.com. He can also be contacted by telephone on 020 8458 5358.

Professor Phillips strongly urges all students to make the fullest use of the internet and email, at whatever the cost and effort. The amount of IP-related information available on the internet is enormous and continues to grow rapidly. It includes all European Court of Justice decisions and materials, many UK and foreign IP cases, news items posted by governmental, professional and commercial organisations, and so on. Interesting and/or useful pieces of information for IP law students will be posted on www.ipkat.com on a virtually daily basis. You will be taken to have constructive notice of all information posted on ipkat in the course of the academic year. If you make Ipkat your home page you won't miss anything.

No amount of formal teaching can confer a benefit equivalent to that which students derive from discussing lectures, cases and problems among themselves. Accordingly, members of the class are strongly encouraged to form into groups for precisely that purpose.

Professor Phillips prefers his lectures to be interactive. He asks questions and, if asked, is prepared to answer them.

Tape recorders are welcome, but anyone who wishes to make any use of any statement or quote which has been taped in the course of a class, for any purpose other than personal study and revision, is required to check its veracity and accuracy first with the speaker.

Background reading and knowledge

This is a law course. Knowledge of specific fields of science or technology is no more necessary for the study of patent law or software protection than the ability to sight-read music is for the study of copyright.

Remember what you have already learned. Students are expected to remember or re-learn their basic principles of tort law (since most IP rights are statutory torts) and contract law (since a contractual licence is the best form of defence to an action for IP infringement), as well as the principles of statutory interpretation. In addition, students are encouraged to read a reputable broadsheet newspaper on a regular basis, paying attention to the IP-based transactions mentioned in the Business section. Metro is not a broadsheet.

Course format

This lecture course is made up of 27 lectures. The
y will address the following subjects:

Lecture no. Topic
1 Introduction to IP; aims of the course; methodology; problems and solutions in IP study

2 to 8 Patents

9 Trade secrets

10 to 14 Trade marks

15 to 16 Passing off and unregistered rights in reputations

17 to 18 Rights in designs

19 to 22 Copyright, authors' rights and neighbouring rights

23 Special theme 1: the IP/competition interface

24 Special theme 2: Dispute settlement, cross-border relief, ADR, choice of law

25 Special theme 3: Rights of personality, publicity and privacy

26 Special theme 4: software protection

27 Special theme 5: TRIPs, international norms and the special problems of developing countries

This list is not immutable and, if the experience of previous years is anything to go by, will almost certainly change if anything of interest crops up in the course of the academic year that merits special attention.

BOOKS & MATERIALS:

Rules of the game

• Most of the best writing in the field of IP has been done by practitioners, not academics. Such writing is generally addressed to practical issues. If there is no conveniently accessible theory, you may be asked to make up your own.

• As a teaching subject, IP is still (relatively speaking) in its infancy, so do not be surprised if different accounts or explanations of the same topic are occasionally quite contradictory.

• There is no magic in the written word. Do not suspend your critical faculties when you read.

• Among the blind, the one-eyed man is king. Do not therefore assume that everyone else knows more than you.

Books

The standard book on IP is W. R. Cornish, Intellectual Property (5th edition 2003). This book is excellent, but many students have found that its excellence is best appreciated after a year's intensive study. The textbook Intellectual Property Law by J. Holyoak and P. Torremans (3rd ed 2001) is easier to read. Lionel Bently and Bead Sherman, Intellectual Property Law (OUP), 2001) is strong on detail and analysis, but daunting in its size. Phillips and Firth, Introduction to Intellectual Property Law, (4th ed 2002) is a little old-fashioned in its approach, but many students find it a convenient entry to the subject. Despite its virtues it is still only an introductory book. Do not rely upon it for issues of technical detail.

There are other books, some of which I may prescribe in appropriate cases.

Journals

Of great value is the constant stream of high-quality articles emanating from leading IP periodicals such as:

EIPR European Intellectual Property Review
IPQ Intellectual Property Quarterly
MIP Managing Intellectual Property
IIC International Review of Industrial Property and Copyright Law
EntLR Entertainment Law Review
BioSLR Bioscience Law Review
CIPA The Journal of the Chartered Institute of Patent Agents
TMR Trademark Reporter

IP is also blessed with numerous dedicated law reports. These include:

RPC Reports of Patent Cases
FSR Fleet Street Reports
ETMR European Trade Mark Reports
InfoTLR Information Technology Law Reports
IP&T Butterworths Intellectual Property & Technology Reports
ETMR European Trade Mark Reports
EPOR European Patent Office Reports
ENPR European National Patent Reports
ECDR European Copyright and Design Reports
USPQ United States Patent Quarterly

The RPCs, FSRs, ETMRs and ECDRs are available on Westlaw. The IP&Ts are available through Butterworths online services.

A regular inspection of current issues of these titles will bring a rich harvest of ideas, analyses and perspectives.

A collection of statutes is strongly desirable. A student edition of IP statutes is published by Blackstone Press. The Butterworths Intellectual Property Law Handbook (6th edition 2003), edited by Professor Phillips, is probably far too extensive and expensive for a casual student of limited financial means. There are also student collections of statutes by Butterworths and Blackstones.

If you want to know the law, read the books and materials. If you want an education, come to the lectures.

PLEASE NOTE: The materials on this list may be supplemented or substituted by other materials in the course of the academic year. They should not under any circumstance be taken as an exhaustive list of citations pertinent to any topic within patent law.

PLEASE REMEMBER: If you make www.ipkat.com your home page, you will automatically pick up a good deal of new patent-related information in the course of the academic year.

Basic sources of UK patent law
Patents Act 1977, as amended, and the Patent Rules
Patents (Supplementary Protection Certificates) Rules 1997
European Patent Convention (as amended)
Protocol on Article 69 of the European Patent Convention

Patent systems
International, regional and national patent protection -- but at what price?
Future proposals: Community patents; Community Patent Court
Luginbuehl, S., "A Stone's Throw Away From a European Patent Court: the European Patent Litigation Agreement" [2003] EIPR 256 to 269
Kingston, W. "What Role Now for European Patent Offices?" [2003] EIPR 289 to 291

Component parts of a patent
Patents Act 1977, s. 130(1)
The specification: a map of the invention
The claim(s): this is where the problems begin
The abstract: for administrative convenience only

Patentability and inventions
The three criteria of patentability: novelty, inventive step and industrial applicability
Why is there so little useful information on inventions in the Patents Act?
Patents Act 1977, ss. 1 to 4

Novelty
Doble, R "Novelty Under the EPC and the Patents Act 1977" [1996] EIPR 511
Asahi's application [1991] RPC 584 (HL): an earlier disclosure or publication must be 'enabling'
Merrell Dow v. Norton [1996] RPC 76: interface between knowledge, discovery and intellectualisation of the inventive process

Inventive step
Haberman v Jackel [1999] FSR 683: any-way-up cup simple but not obvious
IBM/Computer Programs [1999] EPOR 301
Wheatley v. Drillsafe, [2001] RPC 7
Windsurfer v. Tabur Marine [1985] RPC 59: formal steps to identification of the obvious
David J. Instance v. Denny Bros, CA, [2002] RPC 14: is Windsurfer an overrated precedent? Apparently not: see SABAF Spa v MFI Furniture Centres and Meneghetti ca [2003] RPC 14
SEB v De'Longhi Court of Appeal, 4 July 2003 [2003] EWCA Civ 952

Industrial applicability
Patents Act 1977, s. 4
Teva Pharmaceutical v Instituto Gentili SpA [2003] FSR 29

Second use of a known substance
Mobil Friction Reducing Additive G02/88 [1990] OJ EPO 93

Swiss claims
Esai, G-5/83 [1985] OJ EPO 64
Wyeth and Scherings' applications [1985] RPC 545
Bristol-Myers Squibb v. Baker Norton [1999] RPC 253
What is the value of a Swiss claim?

Public policy
Harvard Oncomouse T-0015/90 [1990] OJ EPO 476; EPOR 501
Ford, R "The Morality of Biotech Patents: Differing Legal Obligations" [1997] EIPR 315
Curley, D. and A. Sharples, "Patenting Biotechnology in Europe: the Ethical debate Moves On" [2002] EIPR 565 to 570

Business method patents
Likhovski, Michal "Fighting the Patent Wars", [2001] EIPR 267 to 274
The US State Street decision

Software patents
Vicom's application [1987] OJ EPO 14: 'technical effect' patentable …
Merrill Lynch's application [1989] RPC 561: … so long as it really is 'technical'
Fujitsu's application [1997] RPC 608: British scepticism affirmed
Patent Office Guidelines on the interpretation of the Patents Act 1977, s. 1(2).
Draft Directive on the Patentability of Computer-Implemented Inventions COM (2002) 92
Purposive construction of claims
Catnic v. Hill & Smith [1982] RPC 183
Improver Corporation v. Remington [1990] FSR 181
Protocol to Article 69 of the European Patent Convention
PLG Research v. Ardon [1995] FSR 116
Assidoman v. Multipack [1995] RPC 321
Kastner v. Rizla [1995] RPC 585
Raychem's patents [1998] RPC 31
Pharmacia Corporation v Merck Co. Inc, [2002] RPC 41
Hewlett Packard v. Waters, 10 May 2002 [2002] EWCA Civ 612: you can't import words into a patent claim in order to interpret them
Construction of claims and "file wrapper estoppel"
Celltech Chiroscience v Medimmune 17 July 2003 [2003] EWCA Civ 1008

Infringement
Patents Act 1977, s. 60(1) and (2). "Primary" and "secondary" infringement.
Menashe Business Mercantile v William Hill [2003] RPC 31

Exhaustion of rights
Discovision Associates v. Disctronics [1999] FSR 196

Defences and Euro-defences
Philips Electronics v. Ingman [1999] FSR 112
United Wire v. Screen Repair Services, [2001] FSR 24
Stena Rederi AG v Irish Ferries [2003] EWCA Civ 66
Cook, T "Experimental Use as an Exception to Patent Infringement", [1998/99] BioSLR 166-174

Remedies
Injunction; damages; account of profits; declarations; costs
General Tire v. Firestone Tyre [1972] RPC 457: general principles
Gerber Garments v. Lectra and the prospect of getting one's pound of flesh
Catnic Components v. Hill & Smith [1983] FSR 512, cf.Blayney t/a Aardvark, [2003] FSR 19
Hoechst Celanese v. BP [1999] RPC 203
CMI-Centers v. Phytopharm [1999] FSR 235
Coflexip v. Stolt Comex (No. 2) [1999] FSR 473, reversed by CA [2001] RPC 9
Dyson v. Hoover (No. 2) [2001] RPC 544

Revocation (see also Patentability and Inventions)
Kirin-Amgen v Transkaryotic Therapies unrp aug 2002 - there's only one kind of "insufficiency"

Property rights and transactions
Chandler, P "Employees' Inventions: Inventorship and Ownership" [1997] EIPR 262
Supplementary Protection Certificates
Stoate, N "Supplementary Protection Certificates: Biogen v. SmithKline Beecham and its effect on procedure in the UK Patent Office" [1998] BioSLR 71
Farmitalia Carlo Erba's reference, ECJ, Case C-392/97, 16/09/99
BASF v. Bureau voor de Industriele Eigendom, Case C-258/99, ECJ, 10 May 2001 (what is a 'product' for SPC purposes?)
Takeda Chemical Industries v Comptroller, 2 April 2003 [2003] EWHC 649

Employees' inventions
Patents Act 1977, ss. 39 to 43