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BOOK REVIEW: Janice M Mueller, Patent Law, Third Edition, Aspen Publishers (2009), 613 pages, paper.

I thought I would take time out from my rants about the written description requirement, and patentable subject matter, to let you know about this important addition to IP education tools. In 2003, Professor Mueller, now at the University of Pittsburgh Law School, published the first edition of An Introduction to Patent Law, which was intended to fulfill a need she perceived for an introductory textbook for patent law students that was also rigorous in its analysis of the law, while being manageable in length. The first edition was a mere 398 pages, and a marvel of compression. I used it regularly and felt that, when asked a question, I could confirm or deny my “first impression” of almost any part of 35 U.S.C. with remarkable ease. The new edition has been held to 614 pages, and should be on every patent prosecutor’s shelf, in between Chisum’s (now) three volume Patent Law Digest and, if you are a chem/biotech practitioner, John L. White’s Chemical Patent Practice (a case law summary I still call “The Bible”).

Before issuing this rave review, I thought I would test out the book’s currency in four “hot’ areas of IP law – patentable subject matter, inherent anticipation, obviousness, and the written description requirement. Patent Law is up-to-date in all these areas. Bilski is discussed thoroughly, though Lab. Corps. v. Metabolite Laboratories only rates a footnote. Anticipation by Inherency gets its own subsection in the excellent discussion of section 102, as does KSR in the chapter on obviousness. I need not have worried about the treatment of section 112 issues like enablement and WDR. Professor Mueller has published extensively on WDR and there is a lengthy subsection on what she properly terms “The Written Description of the Invention Requirement.” I would have liked to have seen a bit more on how to logically resolve the “scope of claims” issue under enablement and the WDR but, as I have discussed in an earlier post, the Federal Circuit has just begun to deal with that issue.

A disclaimer is in order, Professor Mueller was “my” law clerk a generation or so back, but, as Patent Law demonstrates, she learned her lessons from me and from my elders (e.g., Judge Giles S. Rich, for whom Mueller also clerked) very well. I would like to close with a quote from her introduction to section 102:

Deceptively straightforward at first reading, when applied, the seven subsections (a) through (g) of 35 U.S.C. s. 102 may seem a rather bewildering Pandora’s box of arcane conventions and obscure terms of art…. First, here are some general recommendations for readers who seek a better understanding of the intricacies of s. 102. It is important to get comfortable with the statute. Post a copy of 35 U.S.C. s. 102 on the wall next to your desk or computer and copy its text into your laptop or PDA. Read the language over every day until you know it by heart.

I think I said something like that 20 years ago, but I can’t be sure. I know I could not have said it better.


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