Intellectual Property

I. Introduction

"Intellectual property" (IP) refers to property rights in patents, inventions, trademarks, copyright and industrial designs. IP law has become increasingly complex and comprehensive in response to efforts to protect this valuable commodity from being pirated. This guide provides useful starting points for research on United States intellectual property law, including a general section on intellectual property law resources and specialized sections on the core areas of IP law: patents, copyright, and trademarks.

Patents and copyrights are authorized by the United States Constitution, which grants to the U.S. Congress "power...To promote the Progress of Science and the useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries." U.S. Const. art. I, § 8, cl. 8. One can find intellectual property law in U.S. federal and state law and in international treaties (for example, the "TRIPS Agreement"). Often, U.S. federal and state intellectual property law is a mixture of U.S. common law, and federal and state statutes. Below is an annotated list of select intellectual property law resources.

II. General Resources

A. Reference Books & Treatises

Robert C. Dorr and Christopher Munch, Protecting Trade Secrets, Patents, Copyrights, and Trademarks. (3rd ed.) (KF2979 .D67 2000).
This single-volume looseleaf is a useful starting point for researching traditional areas of intellectual property law. It discusses federal and state laws and regulations governing copyrights, patents, trademarks and trade secrets. Citations to key cases and secondary material are included. The publication is kept up-to-date by annual supplements.

Arthur R. Miller and Michael H. Davis, Intellectual Property: Patents, Trademarks and Copyright in a Nutshell (7th ed.) (Reserve KF2980 .M52 2007).
This book, oriented towards law students, does a good job of summarizing the basics of U.S. copyright, patent and trademark law.

Sheldon W. Halpern, Fundamentals of United States Intellectual Property Law: Copyright, Patent, Trademark. (2d ed.) (KF2979 .H357 2007).
A one-volume desk reference covering the basics of intellectual property topics, with case and statute references for further reading.

J. Thomas McCarthy et al., McCarthy's Desk Encyclopedia of Intellectual Property (3rd ed.) (Ref KF2976.4 .M38 2004).
This volume provides useful definitions for the concepts and phrases which are found in the law of patents, trademarks and copyright. Entries include references to relevant cases, statutes, and treatises for further reading. Appendices include historical statistics on patent applications and trademark registration, as well as biographical timelines for the offices of Commissioner of Patents, Register of Copyright, and Commissioner of Trademarks.

B. Periodicals & Websites

Duke Law and Technology Review
The Duke Law and Technology Review is an online legal publication that provides thoughtful and in-depth coverage of the latest law and technology issues. The review publishes "iBriefs", short and accessible essays on current intellectual property topics.
Intellectual Property Mall (Franklin Pierce Law Center)
This website is highly recommended as a starting point for conducting general intellectual property research. The web site contains links to Congressional Research Service documents on intellectual property law and select legislative histories, including those for the Patent Act of 1952 and the Digital Millennium Copyright Act of 1998. Although difficult to navigate, the "IP Links” section contains a plethora of information and links to various sub-specialties in intellectual property law.
IP Law and Business
From the publishers of Law.com and American Lawyer, this practice-oriented site publishes recent news stories and case summaries focusing on the business of intellectual property protection, and features prominent attorneys who practice in the area.
Managing Intellectual Property (Euromoney, 2001–) (Periodicals)
This is a practice-oriented newsletter that is a valuable source of United States and international intellectual property law information. It is also available electronically to the Duke University community through the ABI/Inform database.
Patent, Trademark & Copyright Journal (BNA, 1970- )
This weekly publication provides case summaries and news stories related to intellectual property law. It is available online to current members of the Duke Law community through Lexis, Westlaw, and the BNA Electronic Library.
World Intellectual Property Report (BNA, 1997- )
This monthly newsletter provides news and analysis about global developments in IP law. It is available online to current members of the Duke Law community through the BNA Electronic Library.
Both Westlaw and LexisNexis contain a number of other intellectual property newsletters and magazines that are oriented towards the practicing attorney. LexisNexis includes: Mealey’s Litigation Report. Westlaw includes: Andrews Intellectual Property Litigation Reporter (ANIPLR), and Intellectual Property Law Newsletter (IPLN).

C. Finding Materials in the Duke Libraries Catalog

When searching for intellectual property materials in the Duke Libraries Catalog, use general subject headings as a starting point and then select the appropriate subdivisions for a more precise search. Subject headings in intellectual property may include the following terms:

Intellectual Property--United States
Trademarks Law and Legislation
Trademarks--United States
Patents--International Law
Patents--United States
Copyright--International
Copyright--United States
Copyright Infringement
License Agreements

III. Patent Law

A patent for an invention is the grant of a property right to the inventor, issued by the United States Patent and Trademark Office. The right conferred by the patent grant is "the right to exclude others" who wish to make, use, offer for sale, or sell the patented invention in the United States or who might import the invention into the United States. 35 U.S.C. § 271.

The requirements for patentability start at 35 U.S.C. § 101. Regulations on patent law commence at Title 37, chapter 1 of the Code of Federal Regulations.

A. Reference Books & Treatises

Irwin M. Aisenberg, Modern Patent Law Precedent: Dictionary of Key Terms and Concepts. (7th ed) (KF3105 .A35 2006).
This is a dictionary of patent terms. Terms are organized alphabetically by keywords and phrases. Words and phrases are taken from summaries of leading patent cases with precedential value and from important sections in the U.S. Code.
Donald S. Chisum, Chisum on Patents (also titled Patents: A Treatise on the Law of Patentability, Validity and Infringement) (1978–) (KF3110 .C4 & in LexisNexis).
Scholars and practitioners alike frequently cite this essential treatise on patents. The huge fourteen-volume looseleaf set includes a glossary of patent terms, federal circuit guide, forms, statutes and commentary. This set is supplemented four times a year to stay current with the most recent patent law developments.
R. Carl Moy, Moy's Walker on Patents (4th ed.) (2003-) (KF3114.W32 & in Westlaw's MOY-PAT database).
This multi-volume treatise revises a previous version entitled Lipscomb's Walker on Patents (3rd ed.) (KF3114 .W3 1984). The Westlaw full-text contains only the current volumes of the 4th edition as they are published; 3rd edition volumes which have not yet been revised by Moy are not available electronically.
Janice M. Mueller, An Introduction to Patent Law (2d ed.) (KF3114.M84 2006).
This title is part of Aspen’s "Introduction to Law" series, and provides an accessible overview of patent law concepts and principles. Chapters include discussion of each requirement for patentability. Footnotes cite to relevant cases, statutes and secondary sources, for further research.

B. Patent Grants and Applications

Jeffrey G. Sheldon, How to Write a Patent Application (1992–) (KF3120 .S48 1992).
This is an excellent looseleaf on how to write patent applications. In addition to an extensive treatment on writing applications for utility patents, the book also contains specialized information on writing applications for plant patents, electrical patents, biotech patents, and patents for computer software and chemical inventions. Select provisions of the Manual of Patent Examining Procedure are included in this publication.
David Pressman, Patent It Yourself (13th ed.) (Reference KF3114.6 .P74 2008).
This title, from the popular legal self-help publisher Nolo Press, presents the patent application process in layperson’s terms. Sample forms and a glossary of definitions are included.
United States Patent & Trademark Office Manual of Patent Examining Procedure (8th ed.) (http://www.uspto.gov/web/offices/pac/mpep)
This manual is intended for the use of patent examiners, who must decide whether a pending patent application meets all relevant laws and regulations. Each section describes a particular aspect of the application and examination process, and includes citations to related primary legal authority. All prior editions and revisions (back to 1949) are available in PDF through HeinOnline's Manual of Patent Examining Procedure Library.

C. Websites & Blogs

United States Patent and Trademark Office
This official U.S. government web site on patents and trademarks is an excellent resource for researching patent grants, patent applications, and trademark registrations. The site also contains many essential reference sources and manuals geared towards the practitioner. The patent grants database contains images of U.S. patents issued since 1790 and the full text of all patents issued since 1976. A patent applications database contains full text and images of all patent applications since March 15, 2001.
Current Patent Legal Literature
A source for current legal literature on patents, maintained by staff at the University of Texas’s Tarlton Law Library. Includes scanned images of each article’s first page.
Patently-O: Patent Law Blog
This popular blog, maintained by a professor at Boston University Law School, posts the latest cases and developments in patent law.

D. Westlaw & LexisNexis Research on Patents

Both Westlaw and LexisNexis contain full text U.S. patent applications dating back to 1974. Similarly, both Westlaw and LexisNexis possess a number of intellectual property treatises, newsletters and journals.

In Lexis, follow the path Legal > Area of Law (by Topic) > Patent Law to view available databases, which include Chisum on Patents, specialized news sources, and patent applications and grants from the U.S., Japan, Germany, and the U.K.

In the Westlaw Directory, select Topical Practice Areas > Intellectual Property > Patents & Copyrights to view available materials, which include a superior collection of treatises on patent licensing, such as Eckstrom's Licensing in Foreign and Domestic Operations (ECKLICN) and Licensing of Intellectual Property (LICENSIP).

IV. Copyright Law

Federal copyright law is located in Title 17 of the U.S. Code. Copyright law protects "original works of authorship" that are fixed in a tangible form of expression. According to 17 U.S.C. § 102, copyrightable works may include the following subject matter categories:

Literary works;
Musical works, including any accompanying words;
Dramatic works, including any accompanying music;
Pantomimes and choreographic works;
Pictorial, graphic, and sculptural works;
Motion pictures and other audiovisual works;
Sound recordings; and
Architectural works.

However, copyright law does not apply to ideas, procedures, processes, systems, methods of operation, concepts, principles, or discoveries. 17 U.S.C. § 102. (Note: patent law may apply in some of these instances.)

A. Treatises

Paul Goldstein, Goldstein on Copyright, 3rd ed. (KF2979 .G633 & in CCH Business & Finance Library; http://library.duke.edu/metasearch/db/id/DUK00923).
Paul Goldstein, a professor at Stanford Law School, has written this scholarly treatise for lawyers, judges, legal researchers, and public policy decision-makers. The set is composed of 18 chapters on all aspects of copyright law. There are extensive citations to primary and secondary authorities including cases, statutes, regulations, legislative history and other documents.
Mary LaFrance, Copyright Law in a Nutshell (Reserve KF2994 .L34 2008).
This short volume, written for use as a study aid, provides a basic introduction to copyright law.
Melville B. Nimmer and David Nimmer, Nimmer on Copyright: A Treatise on the Law of Literary, Musical and Artistic Property and the Protection of Ideas (1978–) (Reserve KF2994.N56 1978; also available on Lexis).
This looseleaf set is the classic scholarly treatise on copyright law. Courts and other scholars cite to it frequently. The treatise is an excellent starting place for researching specific aspects of copyright law. Updated twice a year, this treatise stays current with recent copyright law developments.
William F. Patry, Patry on Copyright (2006- ) (KF2994 .P355; also available on Westlaw PATRYCOPY database).
A multi-volume examination of copyright law, written by a practicing attorney and law professor. The print edition features a foreword by Sandra Day O’Connor, who cited to Patry’s work while a Supreme Court justice.

B. Websites & Blogs

United States Copyright Office
This web site, the official U.S. government web site for copyrights, contains a number of informative circulars and brochures that focus on the basics of copyright law. The site also includes a helpful "New and Pending Legislation" section that links to full-text U.S. House and Senate bills pertaining to intellectual property law. The U.S. Copyright Office site also contains a searchable database of copyrighted works, which contains records of copyright registrations and ownership documents since 1978. Note, however, that this database is not comprehensive in scope.
Creative Commons
The brainchild of prominent intellectual property law scholar Lawrence Lessig, Stanford Law School, Creative Commons offers model language for various copyright licenses that are less restrictive then traditional licenses. Certain licenses on the site allow the copyright owner to put his work in the public domain for unrestricted use. Other interesting features of the site include a blog with comments and links to free/low cost media provided by users and the Common Content, a repository and directory of Creative Commons licensed works.
Stanford Copyright Renewal Database
This pilot project from Stanford provides information on the copyright renewal status of books which were published in the United States between the years 1923-1963. This time period is unique in copyright law, since earlier works have generally fallen into the public domain, and works published after 1963 were given an automatic renewal by the 1976 revision of the Copyright Act. The titles covered by the Stanford database required a renewal application to avoid copyright expiration, and the records of these applications were previously difficult to obtain.

C. LexisNexis & Westlaw Research on Copyrights

Westlaw provides currently-available Copyright Office publications and circulars (FIP-CPYINFO), the Copyright Office practices manual (FIP-CPYPRC) and also contains an Arnold & Porter Legislative History for the General Revision of the Copyright Act of 1976 (COPYREV76-LH). The Treatises section of the Intellectual Property subfolder also contains the full text of Patry on Copyright as well as many practice-oriented titles like Copyright Litigation Handbook (COPYLITIG) and Copyright Law: A Practitioner's Guide (PLIREF-CPYT).

LexisNexis’s copyright databases are virtually identical to that of Westlaw, and can be accessed by following the path Legal > Area of Law (by Topic) > Copyright Law. However, LexisNexis also provides access to the CIS Legislative Histories Index, which is used for compiling legislative histories on copyright laws. Lexis also provides the full text of its Matthew Bender treatises, such as Nimmer on Copyright (COPYRT; NIMMER) and Geller and Nimmer’s International Copyright Law and Practice (COPYRT; INTCLP).

V. Trademark Law

A trademark is a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others. Trademark law is embodied in both state and federal law. The seminal federal trademark law is called the "Lanham Act." 15 U.S.C. § 1052. Regulations for trademarks and trade names start at Title 37 of the C.F.R.

A. Reference Books & Treatises

Adam L. Brookman, Trademark Law: Protection, Enforcement and Licensing (1999–) (KF3180 .B68).
Written by a trademark attorney, this highly readable single-volume looseleaf publication is oriented towards attorneys that are new to trademark law. It is a useful reference source for academic research and includes helpful charts, citations to important case law and a table of cases. Fully up-to-date, Trademark Law: Protection, Enforcement and Licensing provides a thorough analysis of differences between federal circuits on aspects of trademark law.
Siegrun D. Kane, Kane on Trademark Law: A Practitioner’s Guide (5th ed., 2007- ) (KF3180 .K363 & in Westlaw PLIREF-TMLAW database).
Looseleaf from the Practising Law Institute which covers the basics of American trademark law, from registration to litigation.
J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition (4th ed., 1996–) (KF3180 .M32 1996) (Reserve KF3180.M32 1996; also available on Westlaw).
This treatise is considered the most authoritative source of information about trademark and unfair competition law. Supplemented annually, it covers all aspects of trademark and unfair competition law.
Linda A. Tancs, Understanding Trademark Law: A Beginner's Guide (Ref KF3180 .T36 2009).
Part of Oceana’s "Law for the Layperson" series, this volume provides a basic introduction to trademark registration, maintenance, and enforcement.

B. Websites & Blogs

United States Patent and Trademark Office
The USPTO site contains a searchable database of over 3 million pending, registered, and dead trademarks. This database is referred to as the "Trademark Electronic Search System" or "TESS". The site also contains introductory materials and several U.S. federal trademark practice guides.
The Trademark Blog
This blog is maintained by the law offices of Schwimmer Mitchell, a New York law firm specializing in trademark and copyright law. It is frequently updated with news and analysis of current trademark issues.
Current Trademark Legal Literature
A source for current legal literature on trademarks, maintained by staff at the University of Texas Tarlton Law Library. Includes scanned images of each article’s first page.

C. Westlaw & LexisNexis Research on Trademarks

Both Westlaw and LexisNexis gather and organize federal and state trademark cases and trademark registration databases. In Lexis, follow the path Legal > Area of Law - By Topic > Trademarks to view available databases, which include registration information from U.S. and international jurisdictions, Matthew Bender treatises and practice materials, and specialized case law and legislative databases. LexisNexis contains a useful database on domain disputes that includes dispute decisions from WIPO and the CPR Institute for Dispute Resolution.

From the Westlaw Directory, select Topical Practice Areas > Intellectual Property > Trademarks and Trade Names to view available databases, which include registration searches for various jurisdictions and the trademark examiner's procedural manual. Westlaw also contains a useful database on domain disputes that includes dispute decisions from international organizations based on the Uniform Domain Name Dispute Resolution Policy (URDP-ARB).