6.2 Intellectual Property Law Research
4 min read•august 15, 2024
Intellectual property law protects creations of the mind. It covers patents for inventions, trademarks for brand identities, and copyrights for creative works. Understanding these areas is crucial for researchers navigating the complex landscape of innovation and creativity.
Researching intellectual property involves specialized databases and resources. The USPTO offers and databases, while the Office maintains copyright records. Commercial databases and international sources provide additional tools for comprehensive IP research.
Intellectual Property Law Areas
Patents
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- Patent law protects new, useful, and non-obvious inventions, such as machines, processes, manufactures, and compositions of matter
- Grants the inventor exclusive rights to make, use, and sell the invention for a limited period
- Types of patents:
- Utility patents: Protect the functional aspects of an invention (most common type)
- Design patents: Protect the ornamental design of a functional item
- Plant patents: Protect new varieties of plants
Trademarks
- Trademark law protects words, phrases, symbols, or designs that identify and distinguish the source of goods or services
- Prevents consumer confusion and protects the goodwill associated with a brand
- Trademarks can be registered at the federal level (nationwide ) or the state level
- Common law trademark rights arise from actual use in commerce without
Copyrights
- Copyright law protects original works of authorship fixed in a tangible medium of expression (literary works, musical works, dramatic works, artistic works)
- Grants the author exclusive rights to reproduce, distribute, perform, display, and create derivative works
- Copyright protection arises automatically upon creation of the work; registration is not required but provides additional benefits
- Duration is generally the life of the author plus 70 years
Intellectual Property Databases
United States Patent and Trademark Office (USPTO) Databases
- PatFT (Patents Full-Text and Image Database): Full-text searching of patents from 1976 to present, plus limited searching of older patents
- AppFT: Covers published patent applications from 2001 to present
- TESS (Trademark Electronic Search System): Database for searching federal trademark registrations and applications
U.S. Copyright Office Database
- Online database of copyright registrations and documents recorded since 1978
- Pre-1978 records must be searched onsite at the Copyright Office
Commercial Databases
- Westlaw and LexisNexis offer extensive coverage of intellectual property materials (cases, administrative decisions, secondary sources)
- Specialized tools for patent and trademark searching
Additional Resources
- WIPO (World Intellectual Property Organization) databases for international coverage
- USPTO's Manual of Patent Examining Procedure (MPEP) and Trademark Manual of Examining Procedure (TMEP)
- Subject-specific treatises
Applying Intellectual Property Law
Patent Law Sources
- Primary sources: Patent Act (35 U.S.C.), USPTO regulations (37 C.F.R.), federal court decisions
- Key statutes:
- 35 U.S.C. §§ 101-103: Patentability requirements
- 35 U.S.C. § 112: Specification requirements
- 35 U.S.C. §§ 271-273: and defenses
Trademark Law Sources
- Primary sources: (15 U.S.C. §§ 1051-1141n), USPTO regulations, federal court decisions
- Important provisions:
- 15 U.S.C. § 1052: Grounds for refusal
- 15 U.S.C. § 1114: Infringement of registered marks
- 15 U.S.C. § 1125(a): False designation of origin
Copyright Law Sources
- Primary sources: (17 U.S.C.), Copyright Office regulations, federal court decisions
- Key sections:
- 17 U.S.C. § 102: Subject matter of copyright
- 17 U.S.C. § 106: Exclusive rights
- 17 U.S.C. §§ 107-122: Limitations and exceptions
- 17 U.S.C. §§ 501-513: Infringement and remedies
Analyzing Intellectual Property Issues
- Parse relevant statutory language
- Apply pertinent regulations and agency guidance
- Synthesize case law to determine governing legal principles
- Landmark Supreme Court cases shape interpretation and application of intellectual property laws (Alice Corp. v. CLS Bank, , Google v. Oracle)
Researching Intellectual Property Issues
Patent Research Considerations
- Type of patent, filing or priority date, stage of prosecution
- Searches may involve locating prior art, assessing novelty and non-obviousness, or determining scope of protection
- Key resources: USPTO databases, MPEP, patent classification systems, prior art databases, file histories, court decisions on claim construction and infringement
Trademark Research Considerations
- Assessing likelihood of confusion, evaluating distinctiveness, determining availability for use and registration
- Relevant factors: Similarity of marks and goods/services, strength of the mark, evidence of actual confusion
- Key resources: TESS, TMEP, USPTO Acceptable Identification of Goods and Services Manual, trademark registrations and applications, court decisions on infringement and distinctiveness
Copyright Research Considerations
- Copyrightability, ownership, , infringement
- Investigate originality of a work, analyze scope of exclusive rights, assess whether a use qualifies as a permissible exception
- Key resources: Copyright Office records, Copyright Act, Copyright Compendium, court decisions on fair use and infringement, industry-specific guidelines
General Research Tips
- Use secondary sources (treatises, practice guides, law review articles) for background information and analysis to guide primary law research
- Citators (Shepard's, KeyCite) help ensure cases and statutes are still good law
Key Terms to Review (22)
Cease and Desist: A cease and desist is a legal order or notification directing an individual or entity to stop engaging in a particular activity, typically because it is infringing on someone else's rights or violating the law. This term is often associated with intellectual property law, where it is used to protect trademarks, copyrights, and patents from unauthorized use. By issuing a cease and desist letter, the rights holder formally warns the infringer that legal action may follow if the infringing activity does not stop.
Copyright: Copyright is a legal right that grants the creator of original works exclusive control over the use and distribution of their creations for a specified period. This protection applies to various forms of expression, such as literature, music, art, and software, allowing authors and artists to safeguard their intellectual property from unauthorized use and reproduction. Copyright fosters creativity by incentivizing creators to share their work while ensuring they can benefit economically from it.
Copyright Act: The Copyright Act is a body of law that grants creators of original works exclusive rights to their creations, preventing unauthorized use or reproduction. This legal framework is essential for protecting intellectual property in various forms, including literature, music, art, and software, ensuring that creators can control how their works are used and receive compensation for their efforts.
Design patent: A design patent is a form of intellectual property protection granted to the ornamental design of a functional item, allowing the patent holder exclusive rights to use and sell that specific design for a period of 15 years. This type of patent emphasizes the appearance of an object rather than its functional aspects, distinguishing it from utility patents, which protect inventions based on their utility. Design patents are crucial in industries where aesthetics are key to market appeal, such as fashion and consumer electronics.
Fair use: Fair use is a legal doctrine that permits limited use of copyrighted material without needing permission from the copyright holder. It aims to balance the interests of creators with the public's right to access and use certain works for purposes such as criticism, comment, news reporting, teaching, scholarship, or research. This concept is essential in understanding the ethical boundaries and legal frameworks surrounding the use of intellectual property.
Harper & Row v. Nation Enterprises: Harper & Row v. Nation Enterprises is a landmark Supreme Court case decided in 1985 that addressed the issue of copyright infringement in the context of publishing and fair use. The case involved Harper & Row, a publisher, which had licensed the rights to publish former President Gerald Ford's memoirs, while Nation Enterprises published excerpts without permission, claiming fair use. The Court ruled that Nation Enterprises' publication of the excerpts constituted copyright infringement, emphasizing the importance of protecting an author's exclusive rights over their unpublished works.
Infringement: Infringement refers to the violation or breach of a law, regulation, or right, particularly in the context of intellectual property. It often occurs when someone uses, reproduces, or distributes a protected work without authorization from the rights holder. Understanding infringement is crucial for comprehending the enforcement mechanisms available to protect creative works and inventions from unauthorized use.
Lanham Act: The Lanham Act is a federal statute that was enacted in 1946 to regulate trademarks, service marks, and unfair competition. It provides a national system for the registration of trademarks and aims to protect both consumers and businesses by preventing confusion in the marketplace. This act is essential in the realm of intellectual property law as it defines trademark infringement and outlines the procedures for obtaining federal trademark protection.
Licensing: Licensing is a legal agreement in which the owner of intellectual property grants permission to another party to use, produce, or sell that property under specific conditions. This concept is crucial for protecting and monetizing intellectual property rights, as it allows creators to retain ownership while enabling others to benefit from their innovations and ideas. Licensing agreements can cover various forms of intellectual property, including patents, copyrights, trademarks, and trade secrets.
Matal v. Tam: Matal v. Tam is a landmark Supreme Court case from 2017 that addressed the issue of whether the disparagement clause of the Lanham Act, which prohibits the registration of trademarks that may be considered offensive or disparaging, violates the First Amendment's free speech protections. This case arose when an Asian-American band sought to trademark their name, which included a term that some deemed offensive, highlighting the intersection of trademark law and free speech rights.
Patent: A patent is a legal right granted by a government to an inventor, giving them exclusive rights to make, use, sell, or distribute their invention for a specified period, usually 20 years. This exclusivity encourages innovation by allowing inventors to profit from their ideas while also providing public disclosure of the invention, which contributes to the advancement of technology. Understanding how to conduct effective searches for patents is crucial, as it aids in determining the novelty of an invention and in navigating the complexities of intellectual property law.
Plant Patent: A plant patent is a type of intellectual property protection granted for new and distinct varieties of plants that have been asexually reproduced. This patent protects the rights of the inventor or discoverer, allowing them to control the propagation and sale of the plant variety for a specific period, usually 20 years. Plant patents are essential for encouraging innovation in horticulture and agriculture, as they provide inventors with an incentive to develop new plant varieties.
Prior Art Search: A prior art search is a process of investigating existing patents, publications, and other relevant information to determine whether an invention has already been disclosed or made public before filing a patent application. This search helps inventors assess the novelty of their invention and can guide their decisions on patentability. Conducting a thorough prior art search is crucial in intellectual property law as it can save time and resources by identifying potential obstacles early on.
Protection: Protection refers to the legal safeguards provided to intellectual property rights that prevent unauthorized use, reproduction, or distribution of creative works. This concept is fundamental to ensuring that creators can control the use of their inventions, writings, designs, and brands, fostering an environment that encourages innovation and creativity while also enabling economic growth through the commercialization of intellectual assets.
Registration: Registration is the formal process by which an individual or entity officially records their intellectual property rights with a governmental authority, typically to provide legal protection and recognition. This process helps establish ownership and creates a public record of the intellectual property, which can be crucial in enforcing rights against infringement. Registration varies depending on the type of intellectual property, such as trademarks, copyrights, or patents.
Registration process: The registration process refers to the formal steps required to secure legal rights over an intellectual property asset, such as trademarks, copyrights, or patents. This process typically involves submitting applications to a relevant government authority, providing necessary documentation, and paying associated fees. Completing the registration process grants legal protection and may enhance the asset's value by establishing priority and ownership in the eyes of the law.
Service Mark: A service mark is a type of trademark that identifies and distinguishes the source of a service rather than a product. While trademarks apply to goods, service marks are specifically for services offered by businesses, helping consumers recognize and trust those services. This distinction is crucial in the realm of intellectual property law, as it protects branding and ensures that consumers are not misled by similar offerings in the marketplace.
Trademark: A trademark is a recognizable sign, design, or expression that identifies products or services of a particular source from those of others. Trademarks serve as a vital tool for businesses, helping them build brand identity and protect their reputation in the marketplace. They can include words, phrases, symbols, logos, and even sounds, and are essential in distinguishing goods or services from competitors.
Trademark dilution: Trademark dilution refers to the weakening or lessening of the distinctiveness of a famous trademark, regardless of whether there is confusion among consumers. This concept emphasizes that even if consumers are not misled about the source of goods or services, the value and uniqueness of a well-known mark can be harmed by its unauthorized use in a different context. Such dilution can occur through either blurring, where the mark’s ability to identify goods is compromised, or tarnishment, where the mark's reputation is harmed.
United States Patent and Trademark Office (USPTO): The United States Patent and Trademark Office (USPTO) is the federal agency responsible for granting patents for inventions and registering trademarks in the United States. This agency plays a crucial role in protecting intellectual property rights, ensuring that inventors and businesses can secure their innovations and brands from unauthorized use or infringement.
Utility patent: A utility patent is a form of intellectual property protection granted for new and useful processes, machines, articles of manufacture, or compositions of matter. It gives inventors exclusive rights to their inventions for a period of 20 years from the filing date, which encourages innovation by ensuring that inventors can reap the benefits of their creations without competition during that time.
World Intellectual Property Organization (WIPO): The World Intellectual Property Organization (WIPO) is a specialized agency of the United Nations that focuses on promoting the protection of intellectual property rights worldwide. It provides a global forum for intellectual property services, policy, and cooperation among its member states, fostering the development of international treaties and standards to protect creations of the mind. WIPO plays a crucial role in harmonizing intellectual property laws across different jurisdictions, which is essential for effective legal research in this field.