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The purpose of this pathfinder is to help you find information about intellectual property.
Intellectual property is divided into three subjects: patents, copyrights and trademarks and trade secrets.
Patents are treated at greater length in this guide, but to summarize: in order to obtain a patent an invention must be
useful, novel and non-obvious.
Copyrights protect literary works. In order to obtain copyright protection a work must be original
and that they contain a minimum of creativity. The requirement of originality for copyright is not the same as the
criteria of novelty for patents. It is a much a lower standard. Originality only requires that the expression owe it
its origin to the author, that is, the author came up with the expression by him/herself. Thus, the same expression
could be copyrighted to two separate authors provided each author came up with the expression on his/her own. Further,
the criterion of creativity is also minimal and is satisfied by anything more creative than the phonebook (Feist Publ'ns,
Inc. v. Rural Tel. Serv. Co., 499 U.S. 340).
Trademarks are marks associated with goods or services that serve to identify the source of those
goods or services to consumers. Trademark law prohibits competitors from using the same mark on their goods or marks
that are confusingly similar. The goal of trademark protection is twofold: first to prevent consumer confusion and
second to protect a seller’s interest in protecting the goodwill it has accrued for its products. Unlike patents and
copyrights which are based in the Constitution, trademarks and trade secrets arise from the common law and have been
codified into statutory law by the Lanham Act. Whereas copyrights and patents have limited terms a trademark may last
for as long as the mark is used in commerce. Trade secrets refer to valuable information a business has acquired and
wishes to keep secret from its competitors. If a business has been reasonably vigilant in protecting this information
then courts will not allow competitors to benefit from using underhanded means to acquire the information.
The standards for acquiring patents, copyrights, trademarks and trade secrets differ greatly.
Copyrights do not require any formal registration and exist when the work is created. One of the most important benefits
of registering a copyright, however, is that monetary damages may be awarded for the infringement of a work with a
registered copyright. By contrast, patents must be registered with the patent and trademark office. The invention
submitted for patent is subject to a rigorous evaluation and a description of the invention must be submitted. A hefty
fee is required to register a patent. Moreover, if the invention is not granted a patent then the information describing
the invention is public domain. In general, a mark must be registered and used in commerce before it has trademark
status. Whether or not information is a trade secret is determined on a case by case basis by the courts. Again,
because patents and copyrights are rooted in the Constitution they are the exclusive province of the federal government.
Trademarks are in large part governed by the Lanham Act; however, state law may be important to a full analysis of
trademark and trade secrets and should not be neglected.
I. Constitution, Statutes and Code of Federal Regulations
a. United States Constitution, Article 1 § 8 clause 8.
b. Title 35 Patents. 35 USC 1 et seq
c. Title 17. 17 USC 101-1332
d. Trademark Act of 1946. The Lanham Act, 15 USC 1051-1127
e. Title 37. Patents, Trademarks and Copyrights. 37 CFR 1 et seq
f. Uniform Trade Secrets Act (Drafted by the National Conference of Commissioners on Uniform State Laws,
as amended 1985)
II. Treaties
a. Patent Cooperation Treaty in force from April 1, 2002
b. Trade Related Intellectual Property Issues (TRIPS)
c. Berne Convention for the Protection of Literary and Artistic Works
d. WIPO Copyright Treaty
e. Convention on the Grant of European Patents
f. Chapter 17 on the North American Free Trade Agreement (NAFTA)
g. Universal Copyright Convention
h. Madrid Agreement Concerning the International Registration of Marks.
III. Reporters.
a. Both Westlaw and LexisNexis contain databases of cases that relate exclusively to intellectual
property decisions
b. BNA United States Patents Quarterly. This is available to law students through Lexis or through BNA all
c. Federal Patent Briefs: Westlaw offers Selected briefs filed with the U.S. Supreme Court, U.S. Court of Appeals
for the Federal Circuit, and other courts of appeals that relate to patents. Coverage begins with 1905.
d. Copyright law reporter. KF2990. C65x
e. Reports of Patent, Design and Trademark Cases. KD 1366 .A2 R46x.
Intellectual Property is a topic with many international implications. The following are
non-U.S. reporters:
f. Entscheidungen der Beschwerdekammern des Europäischen Patentamts = Decisions of the Boards of Appeal of the European Patent Office K1504.2 .E97 discontinued
g. Reports of patent cases decided by courts of law in the United Kingdom. KD1366.A2 R46X
IV. Treatises
a. Chisum on patents. KF3110 .C45x. This treatise consists of 16 updating volumes.
b. Patent Office rules and practice. Detailed Rule-by-Rule Analysis of the Patent and Trademark Office Rules of
Practice. KF3120.A6 H6
c. World patent litigation. K1505 .D87
d. Patent Law Perspectives KF3110 .P371989
e. Nimmer on Copyrights KF2991.5 .N522000
f. International Copyright Law & Practice K1420.5 .I541988
g. Trademark protection and practice by Jerome Gilson. KF3180 .G54
h. World Patent Law & Practice K1505.4 .B383X
i. Intellectual property law for business lawyers KF2979 .I433 2005
j. Manual of patent examining procedure KF3120.A6 M36 2001
k. Principles of patent law KF3114 .S34 2004
l. Walker on patents KF3114 .W32 2003
m. Trademark and Unfair Competition Law: Cases and Comments. KF1608 .O6 2002
n. The law of copyright. KF2994 .A721991
V. Law Reviews/Periodicals
a. Harvard journal of law & technology. K8 .A782
b. Berkeley technology law journal. K2 .E495
c. Journal of intellectual property. K10 .O86189
d. Patent Trademark & Copyright Journal from BNA
e. Patent Trademark & Copyright Law Daily from BNA
f. AIPLA bulletin. (American Intellectual Property Law Association) K1 .M4622
g. AIPLA quarterly journal (American Intellectual Property Law Association) K1 .M4618
h. IDEA “The patent, trademark, and copyright journal of research and education”. K9 .D7
i. Journal of the Patent and Trademark Office Society. K10 .O88193
j. Intellectual property law review. K9 .N74755
k. WIPO Magazine. K1401.A13 W57
l. IPL Newsletter. KF2972 .A44
m. IIC; international review of industrial property and copyright law K9 .I17
n. Texas Intellectual Property Law Journal K24 .E92
VI. The U.S. Patent and Trademark Office website and other useful websites.
a. The United State Patent and Trademark Office website http://www.uspto.gov/ is one of the best sources for general information on patents as well as the place to begin patent searches. One may also file electronically for a patent. http://www.uspto.gov/web/patents/guides.htm contains a list of guides on patents, including patent search templates, forms and pdfs of the laws concerning patents.
b. As mandated by part of the Patent Cooperation treaty the World Intellectual Property Organization maintains databases on patents from participating members. http://www.wipo.int/ipdl/en Oklahoma State/
c. University, a federal patent and trademark depository library, has assembled a page on researching patents: http://www.library.okstate.edu/patents/process.htm
d. This site, http://www.ggmark.com/, maintained by Gregory H. Guillot, PC is very comprehensive. It includes general trademark information, list of annotated links on trademarks and links to online trademark databases.
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