by David Pressman & Richard Stim, 2000, 193 pages, $29.95, ISBN 0-87337-575-0. Published by Nolo Press (1-800-992-6656 or www.nolo.com}
For the inventor, entrepreneur, or others wishing to understand patent law, the patenting process and patent rights, this book is a must read. Not only are the two lawyers who wrote this book masters of the subject, but they have the ability to explain in plain everyday English every legal term or phrase they use.
Chapter one points out the distinct differences between Patent Law, Trademark Law, Copyright Law, Trade Secret Law, and Unfair Competition Law. They emphasize that patents are an offensive weapon -- it is the patent owner that must sue or threaten to sue.
An excellent feature of this book is that it is as up-to-date as possible. For example, they point out that starting with applications filed November 29, 2000, all patent applications will be published in 18 months (unless you state in your application that you will not be filing abroad}. A court ruling in 1998 made it possible to obtain patent protection for a method of doing business.
They point out that if you come up with "a new and nonobvious use of an old invention or thing, you can get a patent on the discovery". A myth that never dies is that if you mail a description of your invention to yourself by registered mail, you thereby obtain a "post office patent". The book points out that this has little legal value.
The chapter on patent searching points out that a low-cost preliminary search can now be made by utilizing free databases. A list of terms frequently encountered while computer-searching is given. The book stresses that patent searches are never perfect.
The heart and soul of all patents rest in the patent claims section of the patent. Here the book really shines in explaining how to decipher the formal structure and arcane language that is used in writing patent claims.
Few things shake up a first time inventor as much as receiving the patent office's "first office action" which invariably rejects one or all of the claims made. The book allays this shock by giving an example of a typical rejection letter and how you can respond to it.
Under U.S. patent law only the true inventor, or inventors, may be designated as inventors on a patent. However, if you are employed by a company you may have signed an employment agreement that gives ownership of the patent to the company. The book notes that there is a wide variety of these agreements and it is critical for you to understand the agreement you have signed.
The chapter on patent infringement points out that you cannot sue while a patent is still pending. A common myth is that anyone can "design around" your patent by making minor changes. The authors cite the "doctrine of equivalents" which means that if the infringing product "performs substantially the same function in substantially the same manner and obtains the same results" the courts may regard this as an infringement of your patent.
Patent lawsuits are expensive. A current estimate is "$280,000 up to trial and $518,000 through trial". Alternatives to suing are given.
An entire chapter is devoted to discussing international patent law. They note that foreign patents can be extremely expensive and unless expected returns exceed costs, it is not worthwhile obtaining a foreign patent. If you do desire a foreign patent, it is very important to do a background check of your foreign patent agent first.
The last chapter is called "Help Beyond This Book". It includes web sites, books and a section on working with your attorney. The page on "Reducing the Size of Your Bill" should be read and re-read.
A nine-page glossary of patent terms concludes the book.
While this information was conceived and dedicated to "beginners", it furnishes information on new patent laws and court rulings that will be of benefit to veteran inventors.