8/13/2019 1-s2.0-S0172219012001445-main
1/2
Book review
Figures of Invention: A History of Modern Patent Law,
Alain Pottage, Brad Sherman. Oxford University Press, Oxford
(2010). Hardback 75, ISBN: 978-0-19-959563-1
At rst glance, the title of this book might mislead the
patent
information specialist, on two counts. Firstly, the use of the
word
Figuresgoes far beyond the conventional understanding of
illus-
trations which might be expected. Secondly, to describe it
as
a history of modern patent law without inserting the words
United Statesmay colour a readers expectations.
However, once the reader begins, it becomes clearer that
thisusage is neither arbitrary nor intended to confuse. Whilst it
is
true that the book is replete with US-specic examples (see,
for
example, an entire chapter devoted to reissues and the case
table
which consists of 100 US cases, 4 from the United Kingdom and
2
from Canada), the primary motivation for this bias seems to
be
that US law, beginning from 1790, has the necessary depth of
expe-
rience from which to draw out the authors discussions.
Similarly,
the scope of the text is not at all limited to the role of
illustrations,
but it is using guresas a shorthand for the various ways in
which
intangible ideas can be communicated from one to another. It
thus
considers notonly technical drawings or Figures in the literal
sense,
but all parts of a patent application, text and non-text alike.
The
reviewers interest in the latter is on record[1].
The intended readership is scholars working in
intellectualproperty,.legal theory, economic and social history,
anthropology,
science studies, and philosophy. As such, the patent
information
searcher or analyst may struggle to reduce to practice the
ideas
outlined, but perseverance will be rewarded; it has long been
this
reviewers opinion that it is helpful to try to get into the mind
of
those who draft patent applications in order to become a
better
searcher (1). This book has thought-provoking material for
the
searcher who is frustrated by databases containing texts of
patent
applications which appear to be becoming ever more complex,
technical disclosures allied with a fair degree of deliberate
obfusca-
tion. If nothing else, it reveals the challenge facing both
searcher
and drafter in trying to answer the classic question, What is
the
invention?. Sometimes the problem of capturing an idea on
paper
seems to have less to do with our desire or ability to
communicate,and more with the inherent crudity of our methods of
representa-
tion the guresof the books title.
The introductory chapter explains some of the political and
industrial changes during the 18th and 19th centuries, as
factors
which began to inuence the way in which patent documents
were perceived and used. It may be summed up by the authors
statement:
The central actors in our conceptual history [of modern
patent
law].are the media in which intangible form of the invention
is
made visible and tractable: scale models, text, botanical types,
and
deposits of living material.
Were it not for these material media, patent jurisprudence would
have
no means
of visualizing the invention in the courtroom,
of eliciting the invention from its material embodiments,
of communicating it between different legal or
administrative
contexts, or
ofxing it as the correlate of a right.[reviewers emphasis
andre-formatting].
The chemical searcher may be disappointed at the emphasis in
the book upon mechanical and biological inventions, and
indeed
the authors concede that extending their study to include
chemical,
electrical or even business method patents would have resulted
in
a richer storyof the modern conception of invention. The
language
of chemistry, in the form of 2D or 3D structures and ultimately
the
dreaded hyper-nastyMarkush[2,3], presents its own
possibilities
for communicating ideas or indeed, failing to do so.
The study of Chapter 2, Industrial Copies, puts forward the
idea that in the medieval and early-modern periods,
inventions
were transmitted more by the passing on of undocumented
craft
skills (traditional knowledge) and what we might now call
tradesecrets, rather than by written expression (e.g. a xed recipe
for
working a process) or physical template (e.g. a mould, cast
or
printing press, for making copies of a product). These latter
forms
of technology-transfer came into being with the Industrial
Revolu-
tion, together with an increasing concern (cf. Karl Marx,
Pierre-
Joseph Proudhon) about the ownership of the means of
production.
Indeed, early patent terms (14 years, or two apprentice terms,
for
England) were related more to the time required to transmit
exper-
tise visually and orally from master to student, rather than
any
calculationof what might deliver a fair return on investment.
To
quote the authors, ..regimes of industrial production
divided
knowledge from labourand laid the foundation for a new
under-
standing of knowledge as a disembodied form of property. It
also led to the modern concept of inventive step, as
somethingwhich distinguished the original maker from the mere
manufacturer.
Chapter 3, Recollection and Possession, continues this argu-
ment by examining the increasing role of the patent
specication.
Throughout the 18th and 19th centuries, it evolved to become
the
denitive way of expressing and transmitting an intangible
idea
or invention; in short, founding the knowledge economy,
which
represents rights in ideas as tradeable assets. Although the
French
and US laws of the late 18th century both included provision
for
publication of a detailed specication, actual public
availability
was severely limited in the US until 1861. Scale models
remained1 However, since the reviewer is himself none of the above
scholars by back-
ground, interpretation of this work here is my responsibility
alone.
Contents lists available atSciVerse ScienceDirect
World Patent Information
j o u r n a l h o m e p a g e : w w w . e l s e v i e r . co m /
l o c a t e / w o r p a t i n
World Patent Information 34 (2012) 315316
http://dx.doi.org/10.1016/j.wpi.2012.08.011
http://www.sciencedirect.com/science/journal/01722190http://www.elsevier.com/locate/worpatinhttp://dx.doi.org/10.1016/j.wpi.2012.08.011http://dx.doi.org/10.1016/j.wpi.2012.08.011http://dx.doi.org/10.1016/j.wpi.2012.08.011http://dx.doi.org/10.1016/j.wpi.2012.08.011http://dx.doi.org/10.1016/j.wpi.2012.08.011http://dx.doi.org/10.1016/j.wpi.2012.08.011http://www.elsevier.com/locate/worpatinhttp://www.sciencedirect.com/science/journal/01722190
8/13/2019 1-s2.0-S0172219012001445-main
2/2
a primary medium for communicating details of the invention
to
third parties, such as public demonstrations at learned
societies
or, in the case of litigation, to the courts. Chapter 4, The
Principle
of a Machine considers the consequences of trying to patent
new processes rather than products, and the difculty of
deter-
mining whether a new principle was the subject of discovery
or
invention. This has resonances with the modern problem
ofdesid-
erata patent applications, which claim a product with a range
of
desirable properties, but provide no systematic evidence of
how
to manufacture such a product. The authors state that The
inven-
tion the object of property was dened not by the material
form
or design of the artefact[e.g. the chemical formula or structure
of
a molecule] but by the way the artefact functioned as a
instrument
[e.g. the corresponding biological or pharmaceutical
activity].
Chapters 5 (Mechanical Jurisprudence) a n d 6 (Reissues)
consider the role of models in dening and specifying the
inven-
tion, and of the use of the US reissue law from 1832 to permit
the
granting of patents of expandedscope, as a prerequisite to
litigation
against competitors who had invented around the original
patent
claims. Models came into their own during patent litigation;
for
the technically uneducated judges and jurors, a model was
often
the only way of understanding the principles and operation
of
the invention. Interestingly, the authors also concede that
theyhad a role to play in helping the patent attorney (and
examiner),
a facet which was examined in more detail in reference [1].
Models
relating to unexamined applications were kept in dedicated
rooms
and not open to public inspection, in much the same as
modern
micro-organism deposits under the Budapest Treaty have
strictly
limited availability until grant. As a mechanism of disclosure,
it
was being claimed as late as 1906 that It frequently happens
that
the drawings in the Patent Ofce do not disclose the
subject-matter
of the point in controversy between two or more rival
contestants
for the same invention. The model always does.... However,
by
the late 19th century, it was the text of the specication and
its
associated drawings which came to be seen as the most
complete
and accurate embodiment of the invention, superseding the
model
as the ease of printing and circulation increased. From 1875, a
more
formal structure of text, including a modern form of
abstracted
claim, began to be used in the US; this is discussed in Chapter
7
(Textual Machines), leading to the art of claim
interpretation
and the importance of well-drafted claims as a representation
of
the main inventive idea behind an application. The nal
chapters
(8, Organisms as Manufactures and 9, Cultures, Types and
Taxons)extend the discussion to US Plant Patents and
microbio-
logical inventions, respectively, as means for communicating
the
essence of an invention.
To summarise, this is a difcult subject for the practical
infor-
mation specialist, and in fairness to the authors, this
community
was not identied as being part of the primary readership.
None-
theless, in places the authors do not help themselves by
adhering
to a common practice in legal texts, namely that of using
volumi-
nous footnotes, which detract severely from the ow of the
main
text. It does however stand as a rare discussion of how the
struc-
ture of the modern patent document evolved, and can be
recom-
mended for searchers as a text to dip into rather than read
at
a single sitting. Whether the modern patent application will
continue to evolve as new forms of communication develop,
remains to be seen.
References
[1] Adams S. Electronic non-text material in patent
applicationsdsome questionsfor patent ofces, applicants and
searchers. World Patent Information 2005;27(2):99103.
[2] Ghring KEH, Sibley JF. A giant step for mankind? World
Patent Information1989;11(1):510.
[3] Ustinova EA, Chelisheva OV. Are Markush structures matters
of chemistry andlaw or just gments of the imagination? World Patent
Information 1996;18(1):2331.
Stephen Adams
Magister Ltd, Crown House, 231 Kings Road, Reading RG14LS,
UK
E-mail address: [email protected]
Book review / World Patent Information 34 (2012) 315316316
mailto:[email protected]:[email protected]
