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IP Law: Patents

This guide will provide the basic information you need to know to begin researching and understanding patent law. This guide includes a patent law primer, practical help, and sources for legal research.

Patent Law Basics

patent is a government grant of rights over an invention. An owner of a patent has a property right over the invention and has the exclusive rights to exclude others from making, using, offering for sale, or selling the invention in the United States or from importing the invention into the United States. The United States Patent and Trademark Office (USPTO) grants inventors patents after a review process. The Patent Trial and Appeal Board (PTAB) reviews adverse decisions, appeals of reexaminations, derivation proceedings, inter partes and post-grant reviews, and renders decisions on interferences. 

Types of Patents

When applying for a patent, it is important to note that there are three types of patents:

1. Utility patents: these are granted to inventors for inventing a new or improved and useful process, machine, article of manufacture, or composition of matter.

2. Design patents: these are granted to inventors for inventing a new, original, and ornamental design for an article of manufacture. (Note, design patents cannot have a utility function; they must be solely ornamental--Avia Group International Inc. v. L.A. Gear California Inc., 853 F.2d 1557 (Fed. Circ. 1988).

3. Plant patents: these are granted to inventors who invent or discover and asexually reproduce any distinct and new variety of plants. 

In order for a patent to be issued, the invention must meet four conditions:

1. able to be used (the invention must work and cannot just be theory)

2. A clear description of how to make and use the invention

3. New, or "novel" --something not done before

4. "Not obvious," as related to a change to something already invented. 

Patent law defines the limits of what can be patented, however, these limits are vast and malleable. Creations from software to business methods have received patent protection in the past. When working on a patent application, research paper, or assignment, be sure to explore the vast array of patent case law to determine the likelihood of a successful application or appeal. 

Patent Lifespan

Utility and Plant patents receive protection for 20 years from the day of the grant, while utility patents receive protection for 15 years. 

Sources of Law

Patent law stems from Article 1 Section 8 of the U.S. Constitution, which states that [Congress shall have the power] "To 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." With this guiding principle, congress enacted the Title 35, U.S. Code. Title 35 took its modern structure in 1952 and has been amended several times, with significant amendments, including the 2011 America Invents Act. 

Further, Title 37, Code of Federal Regulations contains regulations covering patents, trademarks, and copyrights. However, regulations covering patents are minimal, mostly covering the process of application and issues such as representation before the USPTO. 

There is also a large body of patent case law that explains and elaborates on the interpretation and implementation of Title 35. 

International Patent Law

There is a robust and complex system for international patents. However, that is beyond the scope of this guide. For general information see this page from the USPTO website.

How to use this guide

Researching the law is not difficult or scary. The key is to be organized and prepared. This guide was built to facilitate legal research following the Rombauer method. The Rombauer method is a dynamic, reliable, and flexible legal research methodology that focuses on building a reliable base of understanding and growing your knowledge in sustainable steps. 

The Rombauer Framework is:

  1. Preliminary analysis (aka get organized and get some context)
  2. Search for Statutes 
  3. Search for Mandatory Case Precedent 
  4. Search for Persuasive Case Precedent 
  5. Refine, Double-Check, and Update 

We suggest reviewing the practical guide series that Bloomberg, Westlaw, or Lexis provides to utilize this guide best. Next, read one of the listed handbooks or practical materials (such as West's In a Nutshell series or Lexis' Understanding Trademark Law). Once you have a solid understanding of the fundamentals, begin preparing your research query. Is your issue state or federal or both? Which statute[s] is your problem going to fall under? What are your key search terms? What element of trade secret law do you need to understand better to make your case? What are the best defenses to your argument? Or, for research purposes, what is the relevant legislative history behind this? Generate a list of questions and key terms. Then dive in. With proper preparation, you should know from your preliminary analysis which issues are at stake and what primary sources you need to explore for your issue. And, of course, don't forget to check the currentness of the statutes and cases and ensure you have the most up-to-date information before finishing your research.

For more, check out this article by the University of Washington School of Law.


Good luck, and have fun!

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