Patents for Chemicals, Pharmaceuticals and Biotechnology: Fundamentals of Global Law, Practice and…

Hardcover | April 11, 2010

byPhilip W. Grubb, Peter L. Thomsen

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The chemicals, pharmaceuticals and biotechnology industries worldwide rely upon being able to patent inventions in order to protect investment in research and development, and to reap commercial rewards. An increasingly globalised sector requires a global perspective, and Philip Grubb's highlyacclaimed book guides the reader through the legal and procedural complexities of the British, European, Japanese and US patent systems, and explains in detail the role of patent practitioners (both in-house and in private practice) in maximising the commercial potential of their client's orcompany's innovative products.This eagerly awaited fifth edition provides vital updating to take account of the latest legal developments, while retaining focus on the relevant technology and industry practices that sets it apart from more general book son patent law and procedure. Patents for Chemicals, Pharmaceuticals and Biotechnology provides the reader with a complete description of the techniques and industry know-how that underlie successful patent practice and portfolio management and will be invaluable to all patent agents and practitioners working in the area ofpatent law. With its lucid and accessible presentation and practical approach, this book will also be welcomed by scientists, researchers and managers without a legal background.

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The chemicals, pharmaceuticals and biotechnology industries worldwide rely upon being able to patent inventions in order to protect investment in research and development, and to reap commercial rewards. An increasingly globalised sector requires a global perspective, and Philip Grubb's highlyacclaimed book guides the reader through th...

Philip W. Grubb is an Intellectual Property Consultant, formerly Intellectual Property Counsel, at Novartis International AG. He was Adjunct Professor at Franklin Pierce Law Center, Concord, NH (2007-8). Peter L. Thomsen is a qualified European Patent Attorney and CEIPI (Centre d'Etudes Internationales de la Propriete Industrielle, R...

other books by Philip W. Grubb

Format:HardcoverDimensions:576 pagesPublished:April 11, 2010Publisher:Oxford University PressLanguage:English

The following ISBNs are associated with this title:

ISBN - 10:0199575231

ISBN - 13:9780199575237

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Table of Contents

Part I: Introduction and Background to the Modern Patent System1. The Nature and Origins of Patent RightsWhat is a Patent?Early History in EnglandEarly History in Continental EuropeEarly History in AmericaThe Consideration for the Grant of a Patent2. Historical DevelopmentsUK 1800-2009USA 1790-2009Other Industrialized CountriesDeveloping CountriesInternational DevelopmentsOutlook3. Harmonization of Patent LawIntroductionThe TRIPs AgreementTRIPs Implementation - Changes to Patent LawsFurther Initiatives on HarmonizationThe Convention on Biological Diversity (CBD)Opposition to TRIPsSummaryPart II: Patent Law and Procedure4. What Can be PatentedThe Requirements of the European Patent Convention and European National LawsThe Requirements of United States LawGrace PeriodsSpecial Categories of Inventions5. Filing a Patent ApplicationShould an Application be Filed?When to FileWhere to FileThe Foreign Filing DecisionNon-Convention FilingsEuropean Patent ApplicationsInternational ApplicationsRegistration and Patents of ImportationPetty Patents6. Obtaining a Granted Patent - PCT ProcedurePCT ProcedureGeneralCh. I Filing an International ApplicationCh. II: The IPRP7. Obtaining a Granted Patent - EPO ProcedureProcedure in the European Patent OfficeAppeals in the EPO8. Obtaining a Granted Patent - National ProceduresTypes of ExaminationDeferred ExaminationOppositionsProcedure in the United KingdomProcedure in the USA9. Maintaining a Patent in Force and Extending the Patent TermPatent TermRenewal FeesExtension of TermExtensions to Compensate for Regulatory DelaysWorking RequirementsLicences of Right10. Enforcing Patent RightsWhat Constitutes InfringementInfringement in the UKInfringement in the USAProcedure in the UKProcedure in the USAProcedure in Continental EuropeProcedure in AsiaPart III: Patentability of Inventions in Specific Technical Fields11. Invalidity and Amendment of Granted PatentsGrounds of Invalidity in the UKRevocation ProceedingsAmendment of British PatentsInvalidity and amendment in the USAInvalidity and Amendment in the EPO12. Chemical InventionsNovel CompoundsSelection InventionsDisclaimersCompounds of Unknown StructurePolymeric CompoundsNew Salt FormsNew Physical FormsNew Synthetic ProcessesAnalogy ProcessesNew Compositions and MixturesNew Uses and new Application Processes13. Pharmaceutical InventionsNew Chemical EntitiesPharmaceutical CompositionsFirst Pharmaceutical UseSecond Pharmaceutical UseScope of SPC ProtectionRegulatory Data ExclusivityOrphan Drug Exclusivity14. Biotechnological InventionsWhat is Biotechnology?Patents and BiotechnologyMicrobiological InventionsRecombinant DNA TechnologyMonoclonal Antibody TechnologyMore Recent Technologies15. Patenting of Genes, Plants and AnimalsPatents and LifeHuman GenesTransgenic AnimalsTransgenic PlantsPatenting of Animals, Plants and Human CellsMorality IssuesPatents for Life - from Bacteria to OncomiceWhy are Patents being Targeted?Part IV: Patenting in Practice16. Software-Related and Business Method InventionsRelevance of Software and Business Method Inventions to Chemistry and BiotechnologyPatenting of Software-Related Inventions in the EPOPatenting of Software-Related Inventions in the UKPatenting of Software-Related Inventions in the USABusiness Method Patents17. The Patent Practitioner and his FunctionsThe British Patent ProfessionThe Patent Profession in the USAThe Patent Profession in other CountriesEuropean Patent AttorneysPatent Attorneys in Private PracticeIndustrial PracticeThe Job of the Patent Practitioner18. Drafting the Patent SpecificationDrafting the ScopeThe Structure of the Patent SpecificationPriority and Foreign Filing TextsBackground of the Invention and Prior ArtUS Sufficiency RequirementsSufficiency Requirements in the UK and the EPOSufficiency Requirements in other CountriesSpecial Requirements for Biotech InventionsLength of Text19. Drafting the ClaimsThe Purpose and Nature of Patent ClaimsForm of ClaimsThe Scope of the Claims20. Prosecution of the Patent Application to GrantLack of UnityLack of NoveltyLack of Inventive StepInterviews with the ExaminerPart V: Commercial Exploitation of Patents21. Inventorship, Ownership and CompensationInventorship in the UKInventorship in the EPOInventorship in the USAOwnershipCompensation for Employee InventorsThe Right to Apply for a Patent and to be Granted a PatentCo-ownershipDisputes as to OwnershipRecordal and Transfer of Ownership22. Commercial Exploitation of PatentsPatents to Exclude the Competition - the Pharmaceutical IndustryPatents for Survival - the Biotechnology IndustryPatents as a Source of Royalty Income - UniversitiesPatents as Lottery Tickets - Individual InventorsPatents as Bargaining Chips - the Electronics Industry23. How to Catch the Infringer - and How Not to be CaughtFrom the Viewpoint of the PatenteeFrom the Viewpoint of the Potential Infringer24. Patent Aspects of LicensingPatent Conflict LicencesTechnology Transfer LicencesThe In-licensing ProcessOut-Licensing - Patent Strategy for the LicensorResearch Collaboration AgreementsContract Research AgreementsFunding AgreementsCompound Purchase AgreementsLicence Contracts25. Patents and Competition LawCharges against the Patent SystemCompetition Law - United KingdomCompetition Law - EUPatent Licence Agreements in the EUCompetition law - USACollaboration between JD and EC Commission

Editorial Reviews

"...a pragmatic primer on life science patenting in Europe and the United States that encompasses a critical mass of clear and thoughtfully presented information on the topic ... an invaluable resource for reference as well as strategy and study" --41 Jurimetrics