The approach of the legislator to drafting new laws and the courts’ ability to influence their interpretation is a topic at the heart of legal studies in common law jurisdictions such as England and Wales. In the field of intellectual property (IP), the intricate nature of judicial cases can distract from the notion that the majority of the questions facing IP practitioners and the courts on a daily basis stem from the interplay between rules and standards and their application. In this book, which focuses on English law, David Booton seeks to untangle the pros and cons of using rules, standards or a combination of the two forms of legal directive in the field of IP law, in order to achieve the best possible outcome in a landscape that is technically complex and ever-changing. The book considers patent, trade mark and copyright law, weaving a narrative that draws the reader to consider the relationship between the choice of form of adjudication and the rights protected, how this influences the courts’ ability to interpret the law, the impact of European harmonisation efforts and the evolving views on the role that IP should have in benefitting society at large. Chapter two aims to provide the reader with the necessary background to understand the author’s definition of rules and standards. Rules are defined as providing a before-the-fact specification of legal outcome, whilst standards allow for a degree of discretion by the decision maker. The author, drawing from a wealth of examples from legislation and case law, discusses the implications of using standards in IP and the part judicial precedents play in restraining the discretion of future courts without stifling progress in the field. The tension between rules, which are certain but inflexible and can at times lead to unfair results, and standards, which are flexible but also provide for a measure of uncertainty, is palpable in the examples provided. Equity also plays an important balancing role, with the granting of so-called springboard injunctions being used as one of the examples in outlining equity’s influence. In Chapter three, the author convincingly argues that rules are particularly well-suited to ex ante determinations, whilst standards work well in assessing rights ex post in terms of correlative duties. The author also considers the issue of perceived bias by the courts when they—for example—take into account the commercial implications of their decisions, or when they are required to rule on morality. In presenting the issues stemming from European Union (EU) harmonization, the author argues that, when the objective is harmonization, a rule-based approach is to be preferred. However, he also points out that where rules are chosen as primary form, there continue to be standards-based elements within those rules which enable the courts to maintain some flexibility. The saga related to the patentability of computer-implemented inventions is outlined as an example of how rules may still be a subject of interpretation. Chapter four considers protectable subject matter under copyright, patent and trade mark laws, advancing the argument that, where there is a rule in each of these rights, it occupies a territory that is already embraced by a corresponding standard. For example, an assessment of the novelty of a patent—a rule-like test—is also required in assessing inventiveness—a standard—as it requires considering the degree of novelty or difference from the prior art. This combination of rules and standards satisfies the expectations of certainty whilst allowing for flexibility and dynamism in the application of the law. Chapter five examines the tension between the notions of individualism and altruism in IP, which, the author argues, has played a part in the choice of form of adjudication. For example, the author considers the rule that a work, in order to be original, should not be copied, against the standards that allow for a reworking of material in the public domain to be copyrightable if it enhances access, appreciation and improves the usefulness of the publicly available material. The idea of rules being associated with individualism and standards with altruism is explored in detail. This chapter is divided into sub-sections, which help separate the discussion of patent, trade mark and copyright law. This approach could perhaps have been adopted throughout the book: the work’s narrative arc means that it benefits from a comprehensive read to fully appreciate the arguments, but the lack of a more discernible internal structure makes it difficult to re-examine specific points afterwards. In Chapter six, the author considers an issue that is frequently at the forefront of debates on IP protection: whether such protection is justified. The use of rules in relation to securing IP protection encourages those investing in creative activities by providing them with a modicum of security, but if those rights are challenged, standards-based considerations prevail, which ultimately introduces an element of uncertainty. The author presents patents as a fitting example, since patent holders need to come to terms with the chance, however small, that the patent will be challenged post-grant. The use of standards post-grant and the uncertainty they provide means that the patent holder will be more willing to grant licences in order to avoid a challenge, and this ultimately benefits the society as a whole. The author also provides interesting examples on trade mark registrations and copyright protection. Botoon concludes the work by suggesting that IP rights may be more aptly described as a ‘privilege’ rather than ‘property’, in that they are privileges justified by the economic benefits that IP protection provides. Not everyone will immediately associate the title Form in Intellectual Property Law with the idea of form of adjudication and the substantive issues that are being addressed by this work. This is potentially a barrier to the book reaching a wider readership, which would be a shame as this work is diligently researched and a remarkably interesting read. IP practitioners may wonder whether this work is primarily academic in scope, but they will be pleased by the degree of perspective it provides, particularly when considering the potential future evolution of IP rights. IP students will find this a valuable text, as it addresses controversial cases and key pieces of legislation while providing important context as to the reasoning behind them. Finally, this work will also appeal to law and policymakers tasked with drafting the next iteration of IP legislation. © The Author(s) 2018. Published by Oxford University Press. All rights reserved. This article is published and distributed under the terms of the Oxford University Press, Standard Journals Publication Model (https://academic.oup.com/journals/pages/about_us/legal/notices)
Journal of Intellectual Property Law & Practice – Oxford University Press
Published: May 4, 2018
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