September 19, 2018
Intellectual Property Law: A Brief Introduction
Intellectual property (IP) law comprises a set of exclusive
If the PTO grants the patent, the patentee has the exclusive
rights to exclude others from making, copying, or using
right to make and use the invention for a set term, usually
certain intangible creations of the human mind. The U.S.
20 years from the date that the application was filed. Any
Constitution’s IP Clause provides Congress with the power
other person wishing to practice the invention needs
to grant “Authors and Inventors the exclusive Right to their
permission from the patent holder during this period. To
respective Writings and Discoveries” in order “[t]o promote
enforce the patent, the patent holder may sue alleged
the Progress of Science and useful Arts.” IP rights are
infringers in federal court and seek an injunction, damages,
intended to encourage innovation and the spread of
and other remedies. Patents are presumed to be valid, but
knowledge by providing incentives to create new works and
accused infringers may defend against lawsuits by claiming
generate useful inventions.
noninfringement (i.e., what they did was not covered by the
patent) or invalidity (i.e., the patent should never have been
The U.S. economy is increasingly knowledge-based, with a
issued because, for example, the invention was not new).
growing focus on technology and innovation. A recent
study by the United States Patent and Trademark Office
Copyright Law
(PTO) found that IP-intensive industries—such as computer
Copyright grants creators of “original works of authorship”
technology, entertainment, and pharmaceuticals—account
a set of exclusive rights in their creative works. Forms of
for 28 million American jobs and $6.6 trillion in economic
expression that are copyrightable include literary works
value, representing 38% of U.S. gross domestic product. IP
(such as books and computer code); musical works and
law, given its economic and cultural significance, is
sound recordings; pictorial, graphic, and sculptural works;
therefore more important than ever to Congress.
audiovisual works (such as movies and television); and
architectural works. The key requirements for a copyright
At the federal level, IP comprises three distinct, yet often
are that the work is independently created, at least
confused, forms of legal protection: patents, copyrights, and
minimally creative, and fixed in some tangible form.
trademarks. Each form of IP protects a different type of
Copyright does not extend to ideas, processes, systems,
intellectual creation, has a different procedure for obtaining
discoveries, or methods of operation.
rights, and grants the IP owner rights that vary in scope and
duration. As a result, each of these different areas of law is
Copyright attaches once a work is created and fixed in a
best considered separately. This product provides a brief
tangible medium of expression (e.g., recorded in a
overview of each form of federal IP protection.
computer file or on a piece of paper). Unlike patent and
trademark, the copyright holder does not need to apply with
Patent Law
the government to obtain a copyright. However, in order to
Whoever invents or discovers “any new and useful process,
sue in federal court, American copyright holders must first
machine, manufacture, or composition of matter, or any
register their copyright with the U.S. Copyright Office.
new and useful improvement thereof” may apply to obtain a
patent before the PTO. Patents can be obtained on almost
Holders of copyrights generally have the exclusive right to
any invention made by humans, save for laws of nature,
reproduce the work, publicly perform and display it,
abstract ideas, and natural phenomena. For example, new
distribute it, and prepare derivative works from it. For most
pharmaceutical drugs are often patented. The key
works created today, the copyright does not expire until 70
requirements for a patent are that the claimed invention is
years after the death of the author. Once the copyright is
novel, useful, and nonobvious, and that the inventor is the
registered, copyright holders may sue infringers in court to
first person to file a patent application.
seek injunctions and damages.
The process for obtaining a patent before the PTO—called
“Fair use” is an important limitation on copyright that
“patent prosecution”—is fairly demanding. The patent
permits certain socially valuable uses that would otherwise
application must contain a written specification that
be infringements (e.g., using portions of a copyrighted work
describes the claimed invention such that a person skilled in
in a parody or book review). Fair use is governed by a four-
the relevant field is able to make and use the invention.
factor test: courts will consider the purpose and character of
During prosecution, a patent examiner at the PTO is to
the use, the nature of the original work, the substantiality of
review the claimed invention to determine if the invention
what was copied, and any market harm from the use. Courts
is (1) truly novel, useful, and nonobvious; (2) directed at
also consider whether the use is “transformative,” that is,
patentable subject matter; and (3) adequately described in
whether it adds new expression, has a different purpose,
the patent application.
and/or alters the original work with new expression or
meaning.
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Intellectual Property Law: A Brief Introduction
Trademarks
trademarks. In addition, descriptive terms (e.g., New York
Trademarks are the third main area of federal IP law.
Pizza, Fast Dry Cleaners) cannot be trademarked unless the
Although a form of IP, trademarks are not a product of the
term acquires an association with a particular source of a
Constitution’s IP Clause. Rather, Congress’s power to
product (so-called “secondary meaning”).
regulate interstate commerce is the source of authority for
federal trademark law. Trademark law seeks to protect
To obtain a federal trademark, a business is required to
consumers from unfair competition by preventing
register the mark with the PTO. (Limited common law
businesses from misrepresenting the source of goods or
rights are available without registration.) Each registration
services.
for a mark is limited to a particular type of good or service.
In general, any “word, name, symbol, or device” may be
Owners of trademarks have the right to prevent other
used as a trademark to identify a particular business’s goods
businesses or persons from using similar marks to identify
or services. Familiar examples include brand names and
their goods or services, if such use is likely to cause
logos such as NIKE and its familiar swoosh. However,
consumer confusion. Like other forms of IP, trademark
generic terms (i.e., the name for a particular type of good)
owners may sue to obtain injunctions and damages in court.
or deceptive terms may not be registered or protected as
If properly renewed, trademark rights may last indefinitely.
Table 1. Comparison of Each Form of Federal Intellectual Property Protection

Patent
Copyright
Trademark
Constitutional Basis
IP Clause (U.S. CONST. art. I,
IP Clause (U.S. CONST. art. I, § 8,
Commerce Clause (U.S.
§ 8, cl. 8)
cl. 8)
CONST. art. I, § 8, cl. 3)
Statutory Basis
1952 Patent Act, as amended,
1976 Copyright Act, as amended,
1946 Lanham Act, as amended,
see 35 U.S.C. §§ 1–390
see 17 U.S.C. §§ 101–1332
see 15 U.S.C. §§ 1051–1141n
Initial Rightsholder
Inventor
Author
Business or person using mark
to identify goods or services
Subject Matter
Any “new and useful process,
“[O]riginal works of authorship”
Any “word, name, symbol, or
machine, manufacture, or
device” used to identify goods
composition of matter”
or services
Subject-Matter
Pharmaceuticals, industrial
Books, musical works, movies, fine
Brand names, logos, distinctive
Examples
machinery, biotechnology,
art, architecture, software
trade dress
manufacturing processes
Requirements for
Novelty; nonobviousness;
Originality (independent creation
Nongeneric; (intent to) use in
Protection
utility; first to file
and minimal creativity); fixation
commerce; first to register
Excluded From
Laws of nature, natural
Any “idea, procedure, process,
Generic terms; descriptive
Protection
phenomena, and abstract ideas
system, method of operation,
terms that lack “secondary
concept, principle, or discovery”
meaning”
Process to Secure
PTO patent application process
Create and fix the work
PTO trademark registration
Rights
(“patent prosecution”)
(registration is required to sue)
process
Exclusive Rights
To make, use, offer to sell, sell,
To reproduce, distribute, or
Prevent uses of confusingly
Granted
and import the patented
publicly perform/display the work,
similar marks with respect to a
invention
and/or make derivative works
particular good or service
Duration
20 years
Life of author plus 70 years
Potentially indefinite
Infringement Test
Practice the claimed invention
Substantially similar to original
Likely to confuse consumers
Main Defenses to
Invalidity; noninfrginement;
Fair use
Fair use; nominative use
Infringement
inequitable conduct
Selected Legislative
Leahy-Smith America Invents
Digital Millennium Copyright Act
Trademark Dilution Revision
Amendments
Act (2011); Hatch-Waxman Act
(1998); Copyright Term Extension
Act (2006); Anti-
(1984); Bayh-Dole Act (1980)
Act (1998); Berne Convention
Cybersquatting Consumer
Implementation Act (1988)
Protection Act (1999)
Source: CRS.

IF10986
Kevin J. Hickey, Legislative Attorney

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Intellectual Property Law: A Brief Introduction



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