Intellectual Property
This guide is intended to provide those researching issues in Intellectual Property Law with a starting point for their studies.
About This Guide
This Research Guide is intended to provide those researching issues in Intellectual Property Law with a starting point for their studies. Intellectual Property is a broad area in the law, comprising the three distinct but interconnected doctrinal areas of Copyright, Patent, and Trademarks. In addition, this Guide includes resources pertaining to a fourth type of intellectual property: trade secrets.
This Research Guide is organized into five sections, with one section providing resources on the overarching area of intellectual property, and the remaining sections each corresponding to one of the foregoing specific doctrinal areas. Each tab in the navigation bar above will take the researcher to a variety of materials - both print and online - that should assist them in their study of and research into Intellectual Property Law and its component parts.
Patent Law
Patent Law is one of the three primary doctrinal areas within Intellectual Property.
As defined in Black's Law Dictionary (11th Ed. 2019), the term PATENT means/refers to:
"1. The governmental grant of a right, privilege, or authority. 2. The official document so granting. 3. The right to exclude others from making, using, marketing, selling, offering for sale, or importing an invention for a specified period (20 years from the date of filing), granted by the federal government to the inventor if the device or process is novel, useful, and nonobvious."
Under U.S. Law, the power to enact legislation to grant this right to exclude vests in the United States Congress by Article 1 § 8, Clause 8 of the U.S. Constitution- the so-called "Copyright and Patent" or "Intellectual Property" Clause:
The Congress Shall Have the Power... "[t]o promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries"
Primary Law - Statutes
USPTO Manual of Patent Examining Procedures Apprendix "L" Patent Laws: Appendix L - Patent Laws (uspto.gov)
From the Legal Information Institute (LII) in Cornell Law School: 35 U.S.C. § 101 et seq.
Getting Started
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Patent Law in a Nutshell
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This Nutshell provides a succinct description of the fundamentals of U.S. patent law. Ranging from the acquisition of patent rights to their enforcement, it contains an overview of relevant statutes, rules, and cases that collectively define this area of intellectual property law. Topics include claim construction, obviousness, anticipation, written description and enablement, infringement, remedies, and other notable doctrines. Patent law has evolved quickly in the past few years. This Nutshell captures those changes and relates them well to the overall fabric of intellectual property law. This reference is suitable for use by those with a beginner's knowledge of patent law, but it has sufficient depth to be instructive for every practitioner in this exciting and dynamic field.
Call Number: online onlyISBN: 9781647088408Publication Date: 2023-06-28 -
Patents Demystified
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For entrepreneurs, investors, creators, tinkers, and any business with products or processes that can be patented, Patents Demystified provides an easy-to-understand insider guide to patents, patent law, and the patent application process. Based on the author's first-hand experiences with both successful and failed companies of all sizes, you will learn the secrets of maximizing patent protection on any budget, with strategies that can be tailored to companies with any business plan or product. Instead of being intimidated and confused by patents, discover how to proactively work with a patent attorney to craft a customized patent strategy, thereby taking the mystery out of what can be an arduous, costly and complicated process.
Call Number: KF3114 .A73 2015ISBN: 9781634251686Publication Date: 2016-06-15 -
Understanding Patent Law by The third edition of Understanding Patent Law provides important and comprehensive coverage for a foundational understanding of patent law, including summaries, overviews, and examples to illustrate the application of the most abstract and complex doctrines. This treatise includes clear and concise summaries of the major cases, with straightforward descriptions of the technology at issue. This edition has been revised to enhance the reader's understanding of all concepts covered in patent courses. Throughout, the book includes discussions of the background policy and historical underpinnings of the primary patent law doctrines to enable an understanding of the reasons that support the doctrine. The work is suitable for developing a working knowledge of the law, as well as for students enrolled in a patent law course. This edition has been fully updated and features: Coverage of all major patent law topics with all recent U.S. Supreme Court and appellate court cases, including the requirements to obtain a U.S. patent right; post-grant procedures; claim construction methods and procedures; an in-depth treatment of patent infringement, defenses to an infringement suit, and international considerations; and an overview of the legislative, regulatory, and court systems that govern the creation, issuance, and enforcement of the patent right. Updated treatment that covers the groundbreaking cases issued since the last edition, including the patentable subject matter cases Alice v. CLS Bank, Association for Molecular Pathology v. Myriad Genetics, Inc., and Mayo Collaborative Services v. Biosig. Discussion of the U.S. Supreme Court's Impression Products, Inc. v. Lexmark, which shifted the foundation of exhaustion from an intent-based doctrine into a fundamental limitation on the patent right. A new section on the impact of Gunn v. Minton and T.J. Heartland v. Kraft Foods on patent litigation. Additionally, the remedies chapter adds four new ground-breaking Supreme Court decisions, including Octane Fitness, LLC v. ICON Health & Fitness, Inc. on willfulness relief and Samsung Electronics Co. v. Apple Inc. on monetary damages for design patent infringement. The Court's new standards for assessing the sufficiency of claims from Nautilis v. Biosig is reviewed, as well as the appellate review of the construction of claims in Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc. A review of the Federal Circuit's Williamson v. Citrix Online, which has become critical to understanding claim construction.
Call Number: KF3114 .L36 2018ISBN: 9781531000691Publication Date: 2017-11-03 -
Questions and Answers: Patent Law by This study guide uses multiple-choice and short-answer questions to test your students' knowledge of patent law doctrine. Each multiple-choice question is accompanied by a detailed answer that indicates which of four options is the best answer and explains why that option is better than the other three options. Each short-answer question (designed to be answered in no more than fifteen minutes) is followed by a thoughtful, yet brief, model answer. Q & A: Patent Law also includes a comprehensive topical index.
Call Number: KF3114.85 .H62 2007ISBN: 9780327170426Publication Date: 2007-12-01
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Principles of Patent Law
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The new edition of this leading text on patent law is an indispensable tool for both students and practitioners. The authoritative exposition of the law includes thoughtful analysis of the intricacies of the America Invents Act, in-depth discussion of nearly twenty recent Supreme Court decisions on patent law, and thorough treatment of all the leading Federal Circuit precedents. The volume also contains detailed materials on international issues, trade secret law, and specialized topics including plant patents, design patents and the Hatch-Waxman Act. The accessible prose, numerous illustrative examples, and humorous asides make the book user-friendly even for those who lack previous exposure to the field.
Call Number: online onlyISBN: 9780314276681Publication Date: 2019-04-08 -
Patent Law
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This title combines a comprehensive view of patent law with key academic insights that explain current policy challenges facing the modern patent system. It draws from a range of original works in the field and provides the scholar, the student, and the practitioner with a useful overview of patent law.
Call Number: online onlyISBN: 9781587789021Publication Date: 2007-12-13 -
Aspen Treatise for Patent Law
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Succinct and timely, Patent Law, Sixth Edition demystifies its subject as it explores and explains important cases, judicial authorities, statutes, and policy. Approachably written for law students, attorneys, inventors, and laypersons alike, this text stands on its own and may be used alongside any patent or IP casebook to support more in-depth study of patent law. New to the Sixth Edition: Coverage of the Supreme Court's ongoing, intensive scrutiny of the America Invents Act (AIA), the most significant change to U.S. patent law in 70 years, including: Helsinn (definition of prior art under the AIA) Cuozzo (non-reviewability of institution decisions) Oil States (Constitutionality of AIA) SAS Institute (rejecting partial institution) Return Mail (federal government not a "person" entitled to post-grant review) Dex Media (cert. granted, reviewability of Board's time-bar decisions) The burgeoning landscape of patent-eligibility jurisprudence under 35 U.S.C. §101, including Federal Circuit decisions in: Vanda, Cleveland Clinic, Genetic Techs., Endo, Athena Diagnostics (laws of nature) Enfish; Thales Visionix (abstract ideas) Berkheimer, Aatrix, Cellspin (role of fact questions in the Mayo/Alice Step Two "inventiveness" inquiry) Disparate viewpoints for analyzing the bedrock requirement of nonobviousness, including the Federal Circuit's first en banc obviousness decision in thirty years: Apple v. Samsung The continued vitality of infringement under the doctrine of equivalents, as illustrated in a spate of Federal Circuit decisions including: Lilly v. Hospira Supreme Court decisions examining patent infringement remedies, including: WesternGeco (offshore lost profits) NantKwest (cert. granted, attorney fee-shifting in §145 civil actions) Supreme Court decisions cabining long-standing defenses to patent infringement, including: Impression Products (patent exhaustion) SCA Hygiene (laches and equitable estoppel) Professors and students will benefit from: Thorough coverage and clear writing that clarifies principal legal doctrines, key judicial authorities, governing statutes, and policy considerations for obtaining, enforcing, and challenging a U.S. patent In-depth treatment and comparison of pre- and post-America Invents Act regimes for novelty and prior art with numerous hypotheticals Timely statistics on patent trends Succinct analysis of multi-national patent protection regimes Helpful visual aids, such as figures, tables, and timelines A sample patent and breakdown of a prosecution history Boldfaced key terms and a convenient Glossary
Call Number: online onlyISBN: 9781543821093Publication Date: 2022-10-27
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Chisum on Patents: A Treatise on the Law of Patentability, Validity and Infringement
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FROM THE PUBLISHER
"Chisum on Patents released in 1978, is the most cited patent treatise with citations in over 1170 US cases, including 14 US Supreme Court decisions.
Chisum on Patents has every legal detail you need to secure and protect a patent claim.
Donald S. Chisum's 53-volume masterwork gives you authoritative analysis of all issues pertaining to patent law, including doctrines, rules and case law relating to patentability, validity and infringement. Whether you're applying for a patent, appealing a patent application denial or litigating patent infringement, Chisum on Patents puts authority on your side. Chisum on Patents is also the most cited patents treatise in law today - cited more than 1000 times by the U.S. federal courts and twice as much as the nearest competitor since it was released in October 1978.
Chisum on Patents now includes analysis of the America Invents Act of 2011 and provides cross-references to related sections/chapters within the treaty for quick and easy research. One-stop research saves you time and money and gives you the information you need to answer questions on every topic in patent law:
• What constitutes a patentable invention
• Fundamental requirements of patentability -- originality, novelty, utility and nonobviousness
• Perfecting rights to a patentable invention
• Rules regarding disclosure and submitting claims
• Double patenting
• Rules in priority of invention
• Patent application process -- from filing through examination and appeals
• Restriction requirements and divisional applications
• Continuation applications
• Requirements for obtaining the benefit of a prior patent filing in a foreign country
• Applications for reissue
• Substantive aspects of infringement
Chisum on Patents also helps you draft patent claims quickly and confidently, and saves you time with over 300 pages of guidance on how best to draft patent claims -- including a detailed explanation of patent claim interpretation. Updated five times a year, no other treatise on patent law keeps you as current. Chisum on Patents provides clarifying analysis of the most important recent decisions and how they may affect your claims, with abstracts of all published decisions of the Court of Appeals for the Federal Circuit in a topically arranged outline."
Call Number: Online (Lexis+) onlyPublication Date: Continuously updated resource -
Moy's Walker on Patents
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This multi-volume treatise (five volumes released to date) provides in depth analytical treatment of patent law.
FROM THE PUBLISHER
Moy's Walker on Patents, 4th offers a comprehensive and analytical treatment of the history of patent law, the patent system's organization and process, patentability issues, and statutory law and caselaw on other patent law issues. This multivolume set also:
Examines patent law in light of property law, social policies, and linguistic theory
Provides quick and easy access to cases and statutes
Reviews the law for appellate argument on unresolved legal issues, such as hybrid claiming
Explains underlying ideas and proposes resolutions to unresolved issues in the field
Latest Developments:
Expanded discussion of applying statutory subject matter as criteria for determining patent eligibility. The discussion focuses on the guidance that can be learned from the courts and the Patent and Trademark Office.
New section discussing the challenges of determining whether inventions containing claim elements that fall in both statutory and non-statutory categories, if considered alone, satisfy the statutory subject matter requirement.
New section discussing the analysis of statutory subject matter considering modern patent-claiming theory. This discussion focuses on viewing the entire invention as a collection of smaller elements that should be evaluated.
New section discussing policy objectives underlying both the evaluation and ultimate decision in determining how inventions containing statutory and non-statutory claim elements are considered.
Call Number: Online (Westlaw Precision) onlyPublication Date: Continually Updated Resource
Selected Online Resources
The United States Patent and Trademark Office (USPTO) "is the federal agency for granting U.S. patents and registering trademarks. In doing this, the USPTO fulfills the mandate of Article I, Section 8, Clause 8, of the Constitution that the legislative branch "promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.""
The USPTO Patents webpage provides guidance on how to apply for and maintain a patent, how to search for existing patents, as well as a variety of resources providing basic information on U.S. patent law.
You can also visit the USPTO's Patent and Trademark Resource Center: PTRC Basic Resources | USPTO