World Patent Information 34 (2012) 315316

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World Patent Information

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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 Figures goes far beyond the conventional understanding of illustrations which might be expected. Secondly, to describe it as a history of modern patent law without inserting the words United States may colour a readers expectations. However, once the reader begins, it becomes clearer that this usage 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 experience 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 gures as a shorthand for the various ways in which intangible ideas can be communicated from one to another. It thus considers not only 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 intellectual property,.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 obfuscation. 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 representation the gures of 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 of xing it as the correlate of a right. [reviewers emphasis and re-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 story of the modern conception of invention. The language of chemistry, in the form of 2D or 3D structures and ultimately the dreaded hyper-nasty Markush [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 trade secrets, 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 Revolution, together with an increasing concern (cf. Karl Marx, PierreJoseph 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 expertise visually and orally from master to student, rather than any calculation of what might deliver a fair return on investment. To quote the authors, ..regimes of industrial production divided knowledge from labour and laid the foundation for a new understanding of knowledge as a disembodied form of property. It also led to the modern concept of inventive step, as something which distinguished the original maker from the mere manufacturer. Chapter 3, Recollection and Possession, continues this argument 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 remained

1 However, since the reviewer is himself none of the above scholars by background, interpretation of this work here is my responsibility alone.

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Book review / World Patent Information 34 (2012) 315316

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 determining whether a new principle was the subject of discovery or invention. This has resonances with the modern problem of desiderata 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 invention 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) and 6 (Reissues) consider the role of models in dening and specifying the invention, and of the use of the US reissue law from 1832 to permit the granting of patents of expanded scope, 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 they had 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 microbiological inventions, respectively, as means for communicating the essence of an invention. To summarise, this is a difcult subject for the practical information specialist, and in fairness to the authors, this community was not identied as being part of the primary readership. Nonetheless, in places the authors do not help themselves by adhering to a common practice in legal texts, namely that of using voluminous footnotes, which detract severely from the ow of the main text. It does however stand as a rare discussion of how the structure of the modern patent document evolved, and can be recommended 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 questions for patent ofces, applicants and searchers. World Patent Information 2005; 27(2):99103. [2] Ghring KEH, Sibley JF. A giant step for mankind? World Patent Information 1989;11(1):510. [3] Ustinova EA, Chelisheva OV. Are Markush structures matters of chemistry and law 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: stephen.adams@magister.co.uk