The Chemist's Companion Guide to Patent Law

  • Chris P. Miller &
  • Mark J. Evans
WILEY: 2010. 329 pp. £66.95

When the invitation to review The Chemist's Companion Guide to Patent Law landed in my inbox I initially viewed it with all the enthusiasm a turkey reserves for Thanksgiving — after all, the only thing potentially drier than a science text is one liberally sprinkled with legal gobbledygook. What made me eventually agree to the task was a keen awareness of the importance of the subject — and an even keener awareness of my ignorance regarding it — as well as the solace offered by the book's rear cover, which boldly promises “everything a working chemist needs to know about patents — in easy-to-understand terms”. Patent law with stabilizers on, then: right up my street.

Authors Chris Miller and Mark Evans are practising chemists as well as patent law enthusiasts, and their appreciation of both ends of the inventor–attorney axis makes them ideally placed to advise researchers. Although only Miller is a qualified lawyer, those concerned about the pair's legal skills need look no farther than the first page of the book, which features a lengthy disclaimer. Flippancy aside, this proviso is intended to make an important point: patent law evolves at a frightening pace, and no book can ever substitute for the advice of an attorney (the text states the rather drier proverb: “a man who is his own lawyer has a fool for a client”). This volume is not intended to be a definitive treatise but a guide for chemists at the coalface, and its success must be judged on the way it explains alien concepts to a non-expert audience. The key question is this: can the authors achieve the daunting task of making the law appealing to scientists?

Before we can answer that query, there is an important caveat to mention. Patent rights are territorial by nature, and The Chemist's Companion Guide to Patent Law is written from a US perspective. This need not be a critical flaw, however, as the law governing patents is harmonized to a large extent and the USA is an important market in which prospective inventors will no doubt be keen to seek protection. Nevertheless, US patent law is not without its idiosyncrasies (rewarding the first to invent rather than the first to file a patent application, for example), and although such quirks do not overly affect the teaching of key concepts, they should be borne in mind by prospective readers outside the USA.

First impressions with regard to user-friendliness are favourable, with the book running to a concise 300 pages speckled with the occasional chemical structure and extensive footnotes. These annotations allow the authors to maintain a brisk pace through the main text while adding meat to its conceptual bones, giving the book a reassuringly authoritative feel. For the most part, the writing is clear and accessible, with a nice line in self-deprecating humour; but it is slightly disappointing to find that the text is not as jargon free as might be hoped: a few legal terms creep in— substantive, fiduciary, office action — and although it can be difficult to avoid using such words it would be better to either do away with them completely or include a brief glossary. The book's structure also is not perfect, largely following accepted trends in patent law that could do with being bucked: the process of applying for a patent is one of the earlier chapters, and although arguably necessary to impart context to subsequent sections on novelty and invention, it is a fusty subject that takes away much of the early momentum.

Despite these grumbles, what the authors do have in abundance is the ability to explain difficult legal concepts in a simple but unpatronizing manner. An early highlight is their deployment of a deft “sword and shield” analogy to explain the difference between patent rights and freedom to operate, and other thorny subjects such as selection patents, inventorship and inequitable conduct are handled in a similarly impressive vein. This breezy competency makes their occasional slip-ups (a tortuous explanation of prior art springs to mind) more glaring, but they are thankfully few and far between. Key concepts are well reinforced with examples, which tend to fall into two categories: actual cases drawn from recent history and hypothetical situations played out by a cartoonish cast of characters. I developed a love–hate relationship with these latter fictions, initially finding them a charming diversion; but unfortunately the antics of the various buffoonish lawyers and their crackpot clients quickly became grating. Given that the authentic examples are often crammed with more drama than an episode of Dallas (the dastardly Vincent brothers of Frank's Casing Crew v. PMR Technologies would not seem out of place at one of J.R.'s cocktail parties), the need for such fantasies is doubtful, although in fairness they do complement the book's informal approach. It is also inevitable that most of the examples here are drawn from the pharmaceutical industry, and although some effort has been made to find relevant cases from other chemical fields, they are still very much in the minority. Notwithstanding these minor criticisms, the authors must be congratulated for making difficult subject matter palatable to even the most bench-weary scientist, a truly impressive feat.

Whether chemists are enthusiastic about learning patent law or not, it cannot be denied that it is an incredibly important aspect of the chemical industry, and a subject that is not well understood by the vast majority of researchers. This ignorance doubtless has wider legal and economic ramifications, and has been exacerbated by both the stuffy aura surrounding legal study and the lack of good entry-level books available to advise inventors of the common opportunities and pitfalls. The Chemist's Companion Guide to Patent Law is adroitly pitched to address these issues, and despite the odd niggle is a worthy read for all inventors working in the chemical industry, and even attorneys seeking a readable primer on US procedures. The authors freely admit in the preface that “(patents) are usually as much fun to read as the warranty for your new refrigerator”, but that is an indictment their own work sidesteps with aplomb.