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CIPA Guide to the Patents Acts
CIPA Guide to the Patents Acts
8th Edition, Mainwork & 3rd Supplement
Practice Area:  Intellectual Property
ISBN:  9780414069220
Published by:  Sweet & Maxwell
Publication Date:  31 Dec 2018
Format:  Hardback, eBook - ProView
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The CIPA Guide To the Patents Act, 1st Supplement to the 8th edition updates the mainwork with the latest developments in patent law.
The Guide brings together the expertise of over 25 highly respected professionals including patent attorneys, solicitors and members of the Bar, all individually selected for their expert knowledge.

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The first port of call for both patent prosecutors and litigators needing access to current law and practice, this essential guide gives you all the tools you need to protect the rights of your clients.


Sets out the acts section by section and, where appropriate, the Features the Patents Act, 1977 and relevant provisions of the Copyright, Designs and Patents Act, 1988 together with relevant EU treaties and directives
Includes the full text of the Acts, section-by-section
Provides the corresponding provisions of the Paris Convention, the TRIPS Treaty, the PCT and the EPC
Includes the UK Patents Rules and the Civil Procedure Rules and Practice Directions relevant to each section
Features the decisions relevant to each section of the UK IP Office and courts and of the EPO Appeal Boards
Includes selected decisions of the US courts
Provides a detailed commentary and analysis of the practical working of each section and of the significance of the decisions handed down under it
Features coverage of developments in the fields of software, biotechnology and supplementary protection certificates for pharmaceuticals
Refers to over 3300 decided ca


The 8th edition offers coverage of legislative and jurisprudence developments to end June 2015, including:

  • Amendments introduced by recent legislation including the Intellectual Property Act, 2014, the Patents (European Patent with Unitary Effect and Unified Patents Court) Order 2015, the Patents (Amendment) Rules 2014 and updates to CPR Practice Direction 63.
  • Generics (UK) Ltd t/a Mylan v Warner Lambert [2015] EWHC 2548 (Pat) (second medical use claims)
  • Lantana Ltd v Comptroller General of Patents [2014] EWCA Civ 1463 (patentable subject matter)
  • Aga Medical Corp v Occlutech (UK) Ltd [2014] EWHC 2506 (Pat) (confidentiality)
  • Teva UK Limited & another v AstraZeneca AB [2014] EWHC 2873 (Pat) (obviousness; common general knowledge).
  • Idenix v Gilead [2014] EWHC 3916 (generic claim for pharmaceutical compounds; rationale supporting effectiveness)
  • International Stem Cell Corporation (Judgment) [2014] EUECJ C-364/13 (human embryo)
  • Eli Lilly & Company v Human Genome Sciences Inc [2014] EWHC 2404 (Pat) (SPC regulation)
  • T 1363/12 SAMSUNG/Reinforcement (test for added subject-matter)
  • G 3/14 Examination of clarity objections
  • G 2/12 Tomatoes II and G 2/13 Broccoli II (product claims; essentially biological processes)
  • Commentary on the many other decisions recently handed down which may be relevant to specific practice issues.


  • Comprehensively reviews significant UK court decisions and practice directions, IP Office decisions and EPO Appeal Board decisions up to 31 October 2016.
  • Outlines the proposals of the Intellectual Property (Unjustified Threats) Bill.
  • Summarizes the Practice Direction for the new Shorter Trials Scheme.
  • Explains the Patents (Amendment) (No. 2) Rules 2016 and their implications.
  • Summarises developments concerning patent eligibility in UK, Europe and Australia.
  • Outlines eligibility developments in the US where the law remains in a state of flux.
  • Reviews recent decisions for novelty and enablement as a condition for novelty.
  • Outlines the latest Enlarged Appeal Board reference concerning disclaimers.
  • Analyses recent inventive step developments, explaining the contrary outcomes in Apple v Samsung (US) and HTC v Apple (UK).
  • Summarises post-grant developments including infringement by supply of brochures, the experimental use defence, interlocutory cross-undertakings in damages, enquiries as to damages and the latest decisions on procedure and costs.
  • Summarises recent decisions regarding SPCs.
  • Introduces contents paragraphs for the more lengthy and significant sections to facilitate awareness and navigation.

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