Patent Claim Interpretation, Global Edition 2008/09. Edited by Edward D. Manzo
Reviewed by Betsy McKenzie, Suffolk University Law School
I highly recommend this book for any law library with an Intellectual Property concentration. For practitioners or a law school alike, this would be a useful book to own. The book is, unfortunately, soft cover. It has a table of contents, with a good introduction, explaining patent claim interpretation, and how the nations and collaborators were chosen for inclusion in the book. There is not an index, but there is a table of cases, organized by section number, corresponding to each chapter or country. That is, the user who has a patent decision from, say, Argentina or the United States can look it up in the table of cases and be directed to the page or pages in which the book discusses the relevant material. There are 628 pages of text with a 28-page table of cases at the end of the book. The Web site lists this book at $225, with free ground shipping.
Edward Manzo is a long-time practitioner in United States and international patent law in his own right. He is a founding partner in the Chicago I.P. firm of Cook Alex. As editor of this book, he gathers a number of leading practitioners from around the world to contribute chapters on patent claim interpretation in many countries. The book provides a vitae of each contributor and the list is quite impressive.
Editor Manzo explains that he selected most of the nations represented in the book by listing the fifty countries with the highest gross domestic product. Most of Europe, Argentina and Brazil, China, Japan, Korea and Vietnam, Russia, Australia, Canada, Mexico, and the United States are among the countries represented.
The chapters on common law nations tend to be the most in-depth, presumably because they have the most fully-elaborated systems of patent claim interpretation. By contrast, the chapters on France and Vietnam fully describe the system in place, but are much shorter than the chapters for Canada, Great Britain, or the United States.
None of the chapters try to follow a standard rubric, again, apparently because none of the nations’ laws follow a standard pattern. But the chapters are clearly written and seem to fully explain each country’s system of patent claim interpretation. Each chapter is written by one or more practitioner with long-term expertise in that country’s patent law regime.
Patent claim interpretation is a key component of patent practice. This is the process by which the language of the patent is construed and applied in the world, perhaps translated even, from one language into another, as a patent filed in one country is interpreted in another. Even in the same language, there is a lot to argue about the boundaries of a patent’s coverage. Since 1996, in the United States, there is a separate pre-trial phase solely devoted to patent interpretation, making the judge the arbiter of patent claim construction here. The patent lawyer who writes a patent without considering how it may be read and interpreted has done the client a grave disservice.
This book brings together excellent material that has been very difficult to locate before. In the increasingly global world of intellectual property, a single volume that explains the methods of many nations is a valuable text indeed. The procedures, law, and traditions vary a great deal from country to country. Indeed, some of the countries covered in the book have only recently begun to develop their own regime of patent claim interpretation, under pressure of global commerce. It appears from the title that Thomson does plan to bring out future editions. I suppose they need to add more nations and keep the information up-to-date as the law evolves.
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