01 June 2013

Updating the CCH Patents Commentary

MicrophoneRegular readers may have noticed a reduction in the rate of new posts on this blog in recent weeks.  Whereas I have generally aimed for three articles per week in the past, lately I have been happy enough just to publish two.

There is a reason for this.  And it is not laziness, or a loss of enthusiasm for Patentology!  It is because I have been ‘moonlighting’.  I have another writing project that has been taking up a lot of my time.

A few months ago I was contacted by the Law & Business Editor at CCH Australia.  For those who may be unfamiliar with CCH, its web site will inform you that:

For over 45 years, CCH has been building a solid reputation in accurate and timely resources by assisting Australian professionals to establish and maintain their practices and businesses. Our clients in the accounting & financial planning, employment & safety, and legal and business communities rely on CCH information to help them advise their clients, run their businesses and manage their obligations.

One of CCH’s products for the legal community is its Australian Industrial and Intellectual Property ‘loose-leaf’ service (which is also available as an online service).  Among other content, this service provides full text legislation and detailed commentary on copyright, designs, patents and trade marks.

With the Raising the Bar reforms coming into effect, CCH asked me if I would be interested in updating its Patents Commentary.  To cut a long story short, I did some quick lobbying around the office at Watermark, a little negotiating with CCH (and I have to say that everyone, on both sides, was really good about it) and ended up saying an enthusiastic ‘yes’!

Over the coming months, the updates that I am working on for the CCH Patents Commentary will start making their way into the loose-leaf and online services.  I understand that the first of these will come out this month.  Along with each update, articles will be published (on Patentology, and elsewhere) which will highlight current issues in patent law and practice, and provide some information about the content of the latest update.

Who Uses Legal Commentaries?

There are a number of legal information services which provide commentary on Australian law relating to patents and other intellectual property.  Since I am currently working with CCH, I feel that it would be a little disloyal to name them in this article.  But those of you who use such services would be well-aware of the competition!  At Watermark, I have access to at least three patent commentaries, including the CCH service, although I have to confess that these days I rarely use any of them.

In working on the CCH Patents Commentary, I have been asking myself why I make such infrequent use of these types of information services.  Of course, that is probably a bit unfair – the main reason professional advisors turn to legal commentaries is to get up-to-speed quickly with areas of the law in which their own knowledge may have fallen a little behind.  Not even the most regularly and diligently updated commentary can provide information which is more current than can be obtained by keeping up with all of the latest court decisions, law and policy reviews and studies, legislative changes and best practices.

In maintaining this blog, I try to keep up with all of the latest developments relevant to the practice of being a patent attorney in Australia.  The search box on Patentology is often the first place I go when trying to recall some snippet of information which has slipped my mind!  That is why I have less need for legal information services these days.  It is also, presumably, why CCH reached out to me when they needed to find someone to help with updating their Patents Commentary.

What Do I Look For in a Commentary?

Even so, having been entrusted with this task I have decided that the best way I can go about it is to try to write the commentary that I would want to use.  Obviously it is important to be current – that is a given.  But what else would I look for in a commentary on Australian patents? 

I think it is important to provide historical context, including discussion of older cases and legislative provisions which predate Patentology… or, indeed, predate the entire internet!  But, at the same time, the historical material should still have current relevance.  Commentary about superseded law, no matter how interesting or elegantly written, is of no assistance to a current practitioner needing to advise a client today about some legal threat to their business.  It should also be very clear why, and to what extent, the older legislation and court authorities remain relevant.

I also think it is important to be practical.  I doubt that practising lawyers and patent attorneys want to spend thousands of dollars a year to read my opinions on whether the courts – and much less the Patent Office – got certain decisions right or wrong.  For one thing, they can read those opinions here, for free!  For another, it is more important, from a practical perspective, to know how a patent examiner will approach a particular type of claim or subject matter.  Similarly, the evolution of the law of inventive step is a fascinating topic, from an academic perspective, but a more common practical problem is knowing which law of inventive step applies to a patent which was originally filed on 31 March 2002.  (You can offer your answers in the comments below!)


I am not sure that I am always going to hit the mark with my updates to the CCH Patents Commentary.  I have time constraints, and I have to use the material that is already in the commentary as a starting point.  Which is not to say that a lot of what is there is not very good, because it is.  But just because it might not be written in the way I would have written it, I cannot just ignore that and start again.  Perhaps one of the most interesting things about this project is the recognition that it is a collaborative effort over an extended time.  I am merely a custodian for a period, as others have been before me, and still others will be in the future.

If you are a subscriber to the CCH Australian Industrial and Intellectual Property service, keep a look out for the updates.  Whether or not you are a current subscriber, if you have any thoughts on things you would like to see in the Patents Commentary, feel free to let me know.  I cannot promise that I will be able to incorporate your ideas, but I do want to try to make it the commentary as useful as I can, within the available time, and other, constraints.

And if you are not a current CCH subscriber, maybe this year will be a good time to take a fresh look?


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