Book Review: "The Patent Wars" By Fred Warshofsky (1994)

I have worked in the patent profession for over three decades. In that time, I have come to hold a clear and unshakable view: the world of patents is divided into two distinct legal and cultural spaces, and each operates by its own logic, structure, and assumptions.

These two spaces are:

• U.S. patents
• Non-U.S. patents

Each of these spaces is valid in its own right. Each is essential to global innovation. But they are separated by a deep and wide divider. The rules, procedures, strategies, and litigation risks that apply in one space cannot be assumed to carry over into the other.

In my view, the most serious professional mistakes occur when practitioners or companies confuse one system with the other—when they bring assumptions from European practice into U.S. enforcement, or when they approach EPO proceedings with an American mindset. This kind of confusion creates vulnerability, not only for legal outcomes, but also for clients' business objectives and risk exposure.

That confusion was amplified by the Leahy-Smith America Invents Act that was passed in 2011, and its most important provision, the "First-Inventor-to-File" System, took effect in 2013. In a sideline only, this is why this legislation is sometimes referred to as "AIA 2011" and sometimes as "AIA 2013". Sometimes one encounters U.S. inventors who wish the pre-AIA system would return. This is understandable—especially among those who believe the first-to-invent rule better protected small entities or individual applicants. I have written about that topic previously (click here).

The Patent Wars, despite being dated in some respects, is an excellent tool for preventing that confusion. It shows how the U.S. system is not only procedurally different, but philosophically different. Litigation in the U.S. is not just a legal process—it is often a calculated business strategy. Understanding that mindset is essential for any European professional whose clients operate in U.S. markets or face the risk of U.S. litigation.

This is where I am coming from: anyone who works in one patent space must first understand which space they are in. Only then can they give advice that is both accurate and defensible.

Background and Perspective

I began working in the field of patents in 1992 as a young patent engineer in Germany. This was a time when the global patent landscape was still sharply divided in both philosophy and procedure. The United States remained committed to its unique "first-to-invent" system, while Europe, through the European Patent Convention, had long embraced the "first-to-file" model.

In 1996, I qualified as a German patent attorney, and in 2001, I became a European patent attorney. These milestones in my own professional life coincided with a critical period in U.S. patent history. As I was gaining practical experience advising European clients on international protection strategies, the United States was moving—slowly and sometimes reluctantly—toward international harmonization. The transition to the "first-inventor-to-file" system would not be completed until the America Invents Act of 2011, but the debate and legal groundwork were already underway by the early 2000s.

Reading The Patent Wars now, decades after beginning my career, is both professionally nostalgic and strategically instructive. The book captures the exact legal and cultural climate in which I began working. It reminds me of the real-world cases and client concerns that shaped the early years of my practice, particularly those involving U.S. litigation risks and the need to explain the drastic differences between European and American enforcement.

For today's professionals, especially those in Europe, the book offers a unique view into the mindset and legal structure that once dominated—and in some ways still defines—U.S. patent enforcement. It also helps clarify how far both systems have come, and where foundational differences still matter in cross-border patent strategy. It provides strategic insight into the culture of American patent litigation, which remains relevant for cross-border advisory work even as specific doctrines and procedures have evolved. In that respect, the book fills a gap that traditional legal training in the area of IP usually overlooks.

Author's Purpose

Fred Warshofsky's purpose in writing The Patent Wars is to expose the transformation of patents from technical legal instruments into strategic and economic weapons. He aims to show that innovation, when paired with aggressive litigation, can determine market dominance. The book presents patent disputes not as technical disagreements, but as full-scale commercial battles with winners and losers.

Main Themes of the Book

• Litigation as Economic Warfare: Warshofsky repeatedly uses military metaphors to frame patent disputes as aggressive, high-stakes conflicts. The "Diaper Wars," Polaroid v. Kodak, and Honeywell's lawsuits exemplify this mindset.
• Strategic Use of Patents: Patents are shown to function not merely as protective rights but as commercial leverage—used for cross-licensing, blocking, and extracting royalties.
• Institutional Strength: The U.S. legal infrastructure—especially the CAFC and ITC—is presented as a powerful engine for protecting domestic innovation through centralized enforcement.
• Global Imbalance: The book explores international friction in patent law, particularly between the U.S., Japan, and Europe, emphasizing the asymmetry in procedural rules and strategic behavior.
• Corporate Monetization Models: Warshofsky documents how companies like Texas Instruments transitioned from manufacturing to revenue generation through licensing and litigation.

Commonalities with Other Works

Like many U.S.-centric works of its time, The Patent Wars treats intellectual property as a critical component of national economic security. The book aligns with literature that emerged in the late 1980s and early 1990s, portraying patents as offensive and defensive tools within global trade. It also assumes U.S. legal standards as a normative baseline and often compares foreign systems as secondary or less evolved.

What Makes This Book Unique

For European attorneys, several aspects of Warshofsky's book stand out:

• Cultural Insight into Litigation: Jury trials, contingency fees, and the unpredictability of U.S. verdicts are described through actual corporate case studies. Nikon's concerns about being understood by a jury (p. 100) reflect the cultural barriers European litigants face in the U.S.
• Exposition of the CAFC: The creation and influence of the Court of Appeals for the Federal Circuit (p. 19) are essential to understanding how U.S. jurisprudence became patent-friendly and litigation-driven.
• Introduction to the ITC: Chapter 4 outlines how the International Trade Commission (ITC) enforces patent rights through exclusion orders. The example of Du Pont suing Dutch company Akzo NV (pp. 111–112) shows the extraterritorial reach of U.S. remedies.
• Patent Clustering by Japanese Firms: The strategy of creating "patent thickets" to force licensing (pp. 28–29, 38–39) remains relevant for understanding sectoral tactics in semiconductors and consumer electronics.
• Patent Monetization Pioneers: Texas Instruments' move into patent-based revenue generation (pp. 121, 251–253) prefigures today's non-practicing entities and aggressive licensing campaigns.

Did the Author Succeed?

Warshofsky succeeded in illustrating how patent enforcement evolved into an economic strategy with global implications. His storytelling is clear and accessible, and his examples are concrete. However, the book does not attempt legal precision or predict future changes. It should be read as a historical and strategic treatise, not a doctrinal guide.

Comparison: U.S. vs. European Patent Systems

Warshofsky's The Patent Wars contrasts U.S. and European patent systems, both directly and indirectly. The table below summarizes the structural differences in a simplifying language:

These differences explain why foreign companies—particularly European or Japanese—have often been structurally disadvantaged in U.S. litigation.

Modern Developments Since Publication

The legal environment has changed significantly since the book's release in 1994, especially following the AIA of 2011/2013. Several of the book's criticisms are now outdated, although its historical portrayal remains accurate.

A. From Ex Parte Reexamination to PTAB Proceedings

The book focuses on ex parte reexamination, criticizing it as one-sided: the challenger submits prior art and is then excluded from the process (p. 269). That system still exists but has largely been replaced in contentious cases by the AIA-created PTAB trials, which offer fuller participation.

Modern U.S. Post-Grant Procedures

Key observations:

• IPR and PGR are now the preferred tools for third-party challenges.
• PGR is the closest U.S. equivalent to European opposition, though with tighter timing and broader legal grounds.
• Ex parte reexamination, as described in the book, still exists but is rarely used in litigation due to its procedural limitations, narrow legal grounds, and lack of appeal rights for challengers.

B. Software and Biotech Eligibility

The book discusses software and biotechnology patenting before critical U.S. Supreme Court decisions.

• Alice Corp. v. CLS Bank (2014) limited software and business method patents under Section 101.
• Association for Molecular Pathology v. Myriad Genetics (2013) held that naturally occurring DNA sequences are not patentable.

C. Priority Rules

The first-to-invent system discussed in the book was eliminated by the AIA in 2013. The U.S. now follows a first-inventor-to-file model, bringing it closer to the European and international norm. Older references to interference proceedings are now of historical interest only.

D. European System Developments

The book gives little attention to Europe's centralized structures, notably:

• The European Patent Office (EPO) and its post-grant opposition system, which allows third parties to challenge a patent within nine months of grant.
• The Unified Patent Court (UPC) and Unitary Patent, launched in 2023, which now offer centralized enforcement and revocation in participating EU states.

These changes have transformed litigation in Europe—offering more coordinated options compared to the nationally fragmented systems described in the book.

Strategic Lessons for European Practitioners

European attorneys advising clients with U.S. exposure must recognize that:

• U.S. post-grant review is now adversarial, fast, and procedurally distinct from both pre-AIA systems and the EPO's processes.
• PGR deadlines are strict; missing the 9-month window may leave only less effective or unavailable alternatives.
• Ex parte reexamination, while still on the books, poses strategic risks due to lack of participation, appeal, and control.

Is the Book Still Worth Reading Today?

Yes—for historical, strategic, and cultural understanding. But not for current legal guidance.

The Patent Wars remains valuable for:

• Understanding the U.S. litigation mindset and the cultural logic of enforcement.
• Studying institutional evolution—especially the role of the CAFC and ITC.
• Learning how patent portfolios evolved into strategic and monetized assets.

However, the book should not be relied upon for:

• Current rules on post-grant proceedings or priority systems.
• The modern scope of patentable subject matter.
• Contemporary European enforcement structures.

Bottom Line

Read The Patent Wars to understand the cultural and institutional roots of U.S. patent practice, not the present-day law. Its historical analysis is sharp and still relevant for strategic orientation, particularly for European attorneys working with U.S. litigation or cross-border clients.

It helps explain why the U.S. system functions as it does today—even if it no longer explains how it works in practice.

IP Lawyer Tools by Martin Schweiger

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