For the next entry in our Beginner’s Guide series, I will touch upon patent law, an area of law that, despite its seeming need for specialization and technical knowledge, holds a large amount of interest for the public at large. The Law Library of Congress receives many questions regarding patent law, particularly with regard to the United States’ patent process. These questions about the patent process seem all the more timely in light of the United States Patent and Trademark Office’s (USPTO) very recent change from a first-to-invent to a first-inventor-to-file system.
While this short Beginner’s Guide may not cover all the various specific requirements that might arise while studying patent law and the patent process, I hope that it provides you with a strong foundation in the area, and a way to find even more advanced information should you need it.
The Library of Congress’s catalog contains several resources that, either in whole or in part, contain information about the laws regarding patents, including:
For True Beginners:
- NOLO’s Patents for Beginners, by David Pressman and Richard Stim (2012)
- Patent it Yourself, compiled by David Pressman (1985-present)
- Patent Law Basics, by John Gladstone Mills III, Robert Clare Highley, and Donald Cress Reiley III (2003-present)
- Patent Law Essentials: A Concise Guide, by Alan L. Durham (2009, 2013)
- Modern Patent Law Precedent: Dictionary of Key Terms and Concepts, by Irwin M. Aisenberg (2003-2010)
- Patent Law in a Nutshell, by Martin J. Adelman, Randall R. Rader, and Gordon P. Klancnik (2008)
- The Patent Writer: How to Write Successful Patent Applications, by Bob DeMatteis, Andy Gibbs, and Michael Neustel (2006)
- Patent Strategy for Researchers and Research Managers, by H. Jackson Knight (2001, 2013)
- Patent Law, by Janice M. Mueller (2013)
- Chisum on Patents: A Treatise on the Law of Patentability, Validity, and Infringement, by Donald S. Chisum (1978-present)
- Patent Law Handbook (1978-present)
- Moy’s Walker on Patents, by R. Carl Moy (2003-present)
- Patent Law Fundamentals, by John Gladstone Mills III, Donald Cress Reiley III, and Robert Clare Highley (2003-present)
- Patent Application Drafting: A Practical Guide, by Morgan D. Rosenberg (2012)
- Intellectual Property: The Law of Copyrights, Patents, and Trademarks, by Roger E. Schechter and John R. Thomas (2003)
- Electronic and Software Patents: Law and Practice, edited by Steven W. Lundberg, Stephen C. Durant, and Ann M. McCrackin (2011)
- Software Patents, by Gregory A. Stobbs (2000-2011)
- Licensing in Domestic and Foreign Operations, by Lawrence J. Eckstrom (1964-present)
- Drafting Technology Patent License Agreements, by Michael J. Lennon (2007-present)
- Drafting Patent License Agreements, by Brian G. Brunswold, D. Patrick O’Reilley, and D. Brian Kacedon (2012)
- Law of Chemical and Pharmaceutical Invention: Patent and Nonpatent Protection, by Jerome Rosenstock (2013)
- Generic Pharmaceutical Patent and FDA Law (2008-present)
- Medical Device Patents (2008-present)
- Patent Litigation, edited by Laurence H. Pretty (2012-present)
- Patent Litigation: Procedure and Tactics, by Ethan Horwitz and Lester Horwitz (1971-present)
- Patent Disputes: Litigation Forms and Analysis, by Gregory J. Battersby and Charles W. Grimes (2013)
Practitioner Guides/Practice Forms:
- Manual of Patent Examining Procedure (1993-present) (online, 2001-present: http://www.uspto.gov/web/offices/pac/mpep/index.html)
- Patent Claims, by Ernest Bainbridge Lipscomb, III (2006-present)
- Patent Law Practice Forms, by Barry Kramer and Allen D. Brufsky (2002-present)
- New Practitioner’s Guide to Intellectual Property, by David R. Gerk and John M. Fleming (2012)
- Patent Law: A Practitioner’s Guide, by Ronald B. Hildreth and David Aker (2012)
- Patents and the Federal Circuit, by Robert L. Harmon, Cynthia A. Homan, and Charles M. McMahon (2011-2012)
- The Patent Trial and Appeal Board: Advocacy and Practice, by Joel Miller (2013)
- Patent Office Rules and Practice, by Lester Horowitz (1959-present)
While the basic right of the federal government to grant patents can be found in Article I, Section 8, Clause 8 of the United States Constitution, much of the current law regarding the patent process can be found in federal statutes, regulations, and case law. As we have noted in past Beginner’s Guides, free digital copies of federal statutes, as printed in the United States Code, and federal regulations, as printed in the Code of Federal Regulations (CFR), can be found at the Government Printing Office’s Federal Digital System (FDsys) website. Most federal statutes regarding patents can be found in Title 35 of the United States Code, while most federal regulations regarding patents can be found in Title 37 of the Code of Federal Regulations.
In addition to the regulations found in the CFR, researchers might be interested in the patent application itself, as well as communications from the USPTO, specifically the determinations made by USPTO patent examiners (sometimes called the “prosecution history” or the “file wrapper”). The USPTO offers many online services for searching patent applications and prosecution histories, among other documents, both on its “Search for Patents” website, and its “Patent Online Services” website.
Patent Cases (Administrative and Judicial)
If the denial of a patent application is appealed, or if there is “interference” (the term for a “challenge…between an application and either another application or a patent”), a patent application will likely be reviewed by the Patent Trial and Appeal Board (previously known as the Board of Patent Appeals and Interferences, or the BPAI). While many of these cases can be found in subscription databases like Westlaw and LexisNexis, the Patent Trial and Appeal Board (PTAB) offers links to cases it considers precedential and informative on its website.
For more broad coverage of patent law cases, whether tried in administrative or federal appeals courts, patrons may want to use The United States Patents Quarterly (USPQ). The USPQ, which publishes intellectual property cases from 1929 to the present, is one of the most widely-accepted reporters in the field.
Other Online Resources
Newcomers to patent law can also find some very helpful resources on the web, where practitioners, researchers, and professional associations in the area of patent law have made research information freely available. Some websites that may be of interest are:
- Patent Process Overview, by the USPTO
- Anatomy of a Patent Case, prepared by the Complex Litigation Committee of the American College of Trial Lawyers for the Federal Judicial Center
- Understanding “Patentese”—A Patent Glossary, by Arnold B. Silverman and George K. Stacey (originally appeared 48 JOM 77-79 (1996))
- American Intellectual Property Law Association, which has also produced an interesting overview of Intellectual Property Law for beginners, called What is IP Law?
- Patent Law section of the World Intellectual Property Organization (WIPO)
- Patent Law and Inventions, by NOLO
- Patent, by the Cornell Legal Information Institute (LII)
In addition, researchers may want to review some of the blogs in the area, listed below, which discuss recent patent cases, patent applications, and USPTO guidance:
While I have tried to cover a broad selection of resources that may be most helpful to a beginner in the field, I know that this guide only begins to scratch the surface of this very detail-oriented subject. If you do not see your favorite patent law resources above, please share them with us in the comments.
Also, as always, feel free to contact the Law Library of Congress if you have any questions.
 As a side note, researchers should keep in mind that patent law is a subset of a larger area of law called intellectual property law (or “IP law”), which covers not only the law of patents, but also the law of copyrights, trademarks, and trade secrets.
Update on March 29, 2013: Typo corrected. Thanks to Groklaw for finding it!
Update on June 18, 2013: The post was updated to include a new edition of a book.
Thanks for this really exhaustive guide to patents in current law! You might be interested to look at patents in legal history. Ryan T. Schwier recently wrote a post on his blog Lexploratorium, http://lexploratorium.tumblr.com/post/45049316783/a-brief-legal-history-on-patent-drawings-with , where he focuses on the history of patent drawings, an important element of patents.