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4 - Software patent examination

Published online by Cambridge University Press:  22 July 2009

Philip Leith
Affiliation:
Queen's University Belfast
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Summary

When I have a new trainee, on his first day I tell him … two things. The first is you do exactly the same when writing a story – you collect the facts and you must give them a structure, the structure of the claims. And if you are a good author, then that is the first requirement. The technical element you can learn from the person who comes to you – there is no need to know anything about the topic you are working on. But then when preparing a case you have to convince the examiner of the merits of the invention. And that is not a point of technical ability but of psychology.

Introduction

Whilst amongst a group of postgraduate IP students, I made a statement which I thought was relatively non-controversial: that getting patent protection was not too difficult. The law students, almost as one, let out a groan of dispute which clearly suggested that they considered me wrong. Is this a view that most lawyers hold? Perhaps more comfortable with the substantive law of patenting rather than the technology being discussed – noting the seeming highly technical nature of the patent specifications and concluding that it must ‘all be very difficult’ indeed? It is not clear why the students viewed patent examination as such a significant hurdle to overcome.

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Publisher: Cambridge University Press
Print publication year: 2007

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  • Software patent examination
  • Philip Leith, Queen's University Belfast
  • Book: Software and Patents in Europe
  • Online publication: 22 July 2009
  • Chapter DOI: https://doi.org/10.1017/CBO9780511495267.005
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  • Software patent examination
  • Philip Leith, Queen's University Belfast
  • Book: Software and Patents in Europe
  • Online publication: 22 July 2009
  • Chapter DOI: https://doi.org/10.1017/CBO9780511495267.005
Available formats
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Save book to Google Drive

To save content items to your account, please confirm that you agree to abide by our usage policies. If this is the first time you use this feature, you will be asked to authorise Cambridge Core to connect with your account. Find out more about saving content to Google Drive.

  • Software patent examination
  • Philip Leith, Queen's University Belfast
  • Book: Software and Patents in Europe
  • Online publication: 22 July 2009
  • Chapter DOI: https://doi.org/10.1017/CBO9780511495267.005
Available formats
×