introduction to ip research tools & strategies
TRANSCRIPT
Intro to IP Research : From the Dustiest Law Book to the Most
Far Off Database
©2016Jon R. Cavicchi, J.D., LL.M.(IP)
Professor & IP Librarian
Research Rule 1
Research Rule 2
Law school is a fantasy land• Unlimited access to most expensive tools• Dominant reliance on Lexis & Westlaw one search • Research behavior not measured and tied to
remuneration• Insufficient incentive to learn effective information
seeking behavior and apply the spectrum of tools from free to premium.
Your goal as as information literate IP professional
• Get to know how to find and evaluate sources during your law school years
• Do comparative searches using free and premium services
• Develop your personal IP Research Toolkit to keep up to date and have indicated research tools and strategies ready
What is IP?• UNH Law takes the broad WIPO definition • Intellectual property (IP) refers to creations of the mind: inventions, literary and
artistic works, and symbols, names, images, and designs used in commerce.• IP is divided into two categories:
– Industrial property, which includes inventions (patents), trademarks, industrial designs, and geographic indications of source; and
– Copyright, which includes literary and artistic works such as novels, poems and plays, films, musical works, artistic works such as drawings, paintings, photographs and sculptures, and architectural designs. Rights related to copyright include those of performing artists in their performances, producers of phonograms in their recordings, and those of broadcasters in their radio and television programs.
• The innovations and creative expressions of indigenous and local communities are also IP, yet because they are “traditional” they may not be fully protected by existing IP systems. Access to, and equitable benefit-sharing in, genetic resources also raise IP questions. – IP and Traditional Knowledge – IP and Traditional Cultural Expressions/Folklore
• “Neighboring Rights”
3 Basic Tracks
• Prosecution• Litigation• Transactional
IP : the “3 stool legs”• Here's my list of positions or categories of positions that IP
lawyers may hold or supervise, based on my experience. 18 is a big number! This is a rough draft that could be refined and grouped more thoughtfully.
• Generally, of the 3 stool legs (legal, business, creative) these focus on the legal leg, but there's overlap.
• Also, generally the responsibilities of people in these job categories fall within the "6 Ps" of organizational policies and practices -- Policy on IP, Protecting IP, Personnel, Procurement, Partnering, and Policing rights. – Adjunct Professor Michael Gollin
• Attorney - patent prosecution attorney, trademark attorney, IP "lite" attorney, patent litigator, other IP litigator
• in-house• law firm• Transactional IP professional - corporate
business development, university technology transfer licensing specialist
• Investigator - eg. counterfeit, Kroll, Marksmen• Negotiator, mediator, arbitrator• Government official• - registrar of rights (patent examiner,
trademark examiner, copyright registrar)• -enforcement official (customs, law
enforcement)• - legislative (staff)• - regulator• NGO - advocacy (US, Geneva, other countries)• Education - professors, trainers• Academic IP researcher - professors, law school
and university economics etc. faculty and research staff
• Technology research management - corporate chief researcher, nonprofit eg university tech transfer office
• Data manager - librarian, Thomson Reuters, WIPO/EPO/USPTO government website management
• Litigation support - other than investigations, data management, translations and illustration
• Docketing and IP administration - supervisor, designer of software (CPI, CPA, etc.)
• Translator (within firm, or in global translation company)
• Illustrator• IP trader - auctioneer, broker, securitizer (ICAP
Ocean Tomo, RoyaltyPharma, etc.)• Human Resources department - overseeing
creative staff with appropriate employment agreements etc.
• Accounting - Big accounting firm consulting and evaluation
• Finance - due diligence
What are you managing?
• Legal Research• Fact research• Patent, Trademark, Copyright Registrations– Prosecution History
• News– Legal– General – Dockets
Core IP Legal Research Sources
UNH Law IP Library
Physical and virtual holdings
Welcome to UNH Law IP information central
• Nationally unique IP Library– Content ancient to real time– Content news and practice to highly scholarly– Web IP info platforms from free to premium– Dedicated IP information professional– IP Information Literacy courses
• Award winning virtual IP Library : The IP Mall– Globally unique content
That said…• Think outside the box with IP and IP research– Dedicated IP content– General content that contains IP parts• Example is practice materials on floor one
– IP is interdisciplinary – IP is global• Content from every country
• often in foreign languages
Unique Features
• One stop shop (including some IP profs!)• Ultra comprehensive• Old to cutting edge materials• Scholarly to news content• Practice materials• Unique content • Global• Interdisciplinary
Most secondary sources in the IP Library are nowhere in e-format
Lexis/Westlaw Type Services
E-Journals
News
Premium Interdisciplinary platforms full of IP content
WAYS TO ACCESS IP LIBRARY CONTENT
• MelCAT Online Catalog– Advanced search limit to IP Library
• Stack browsing• References – Text of sources– Cross references– Footnotes – Other humans
• Move from online to print version
IP Content : Lexis v. Westlaw• Jon R. Cavicchi, Lexis v. Westlaw for
Intellectual Property Research – Better, Different or Same and the Qwerty Effect? 47 IDEA 363 (2007)
• Change is constant– More data – More analytical tools– New search platforms
•Similar– primary sources of domestic law– Forms – Secondary practice sources from other legal publishers– News– Litigation and transaction tools
•Vary– Secondary sources by Lexis and West Publishing – foreign IP laws– Patent and trademark registrations – Docket tracking and documents – People data
Better, different, same?
Customize Lexis and Westlaw for IP• Reading the menus teach you the sources!• Westlaw– Practice Areas– Favorites – Custom pages– IP Topics & Key Numbers
• Lexis– Practice Areas– Favorites – Practice Pages
• Domestic– State– Federal
• Foreign• International • Comparative • Interdisciplinary• Facts • Patent, Trademark, Copyright Registrations • Other governmental and NGO registries and
databases
Primary Sources of Domestic Core IP Law
• Cases• Statutes• Treaties and other International Agreements• Regulations• Administrative Decisions• Procedural Manuals• Other executive documents of varying legal authority– Q. are they authorized by statute or been through
rulemaking?
Secondary Sources
Types• Spectrum of scholarly to news• Spectrum of ancient to real time• Treatises• Practice Materials• Continuing Legal Ed• Periodicals• Web content spectrum• Social media?
Same basic legal research tools cover IP
• Lexis Publishing• West Publishing• Aspen/Kluwer• CCH• BNA• Oxford University Press• Edward Elgar• Universe of practice, CLE, government, NGO, grey
publishers
IP Treatises in Multiple formats• Print– Table of Content = outline of law
• Wexis – mostly loose-leaf updated titles
• Publisher web platforms• eBooks• What do you do if you end up
in a organization that has no premium secondary IP content?
• Chisum on Patents (Lexis)• McCarthy on Trademarks (West)• Nimmer on Copyright (Lexis)
Practice Materials• Practice books in the IP Library• General practice sets on floor one and Wexis
– Federal Practice– AmJur & West Legal Forms
• Lots of IP forms on the open web• Wexis have massive conglomerated form databases
– Causes of Action• Non IP Practice Materials on floor one with IP sections
– Bankruptcy, tax, antitrust… Westlaw searches
EVERY form anywhere on
Westlaw
Periodicals: news to scholarship
• IP Library – More comprehensive than Wexis or open web
• Wexis Topical or general databases• Legal Resource Index to the next level…• Open Web Law Reviews– Justia– Law schools– Scholarship repositories
• Interdisciplinary : open & premium web
Lexis and Westlaw LITE
Open Web Court Decisions
• Megasites• Boutique sites• News sites• Social media • Court by Court• No federated search• But see Google Scholar– scope is limited
Open Web : Docket Tracking
• NGO sites• Court by court
Open Web Administrative Decisions
• Board of Patent Appeals & Interferences• Trademark Trial and Appeals Board• Copyright Appeals Letters • Copyright Royalty Tribunal Opinions
Open Web Federal Statutes• Megasites• Boutique sites• News sites• Social media • Government sites• Agency sites link out
Compiled Legislative Histories
Best Premium IP Legislative History One Stop Shop
• Megasites• Boutique sites• News sites• Social media • Government sites– Agency sites link out…
Open Web Regulations
Open Web Procedural Manuals
• Manual of Patent Examination Procedures• Trademark Manual of Examination Procedures• Trademark Trial and Appeals Board Manual• Compendium III: Copyright Office Practices
• Directory of Intellectual Property Offices
• WIPO Lex• WIPO-Administered Treaties• Patent Cooperation Treaty• Trademark Law Treaty• Madrid Protocol • Internet Sources for Intellect
ual Property Case Law
• Agreement on Trade-Related Aspects of Intellectual Property Rights ("TRIPS")
• Berne Convention• Paris Convention• Universal Copyright C
onvention
Open Web Portals
General Foreign Law Sites
You will have to develop you own
supplemental lists of foreign law sites
Featured Open Source
1239 databases from 123 jurisdictions via 14 Legal Information Institutes
Categories of IP Research Related Sites
• National IP Offices• Government agencies that deal with IP
matters• NGO Sites– Professional organizations– Special interest groups– Educational institutions
• Individuals– Lawyers– Professors– Experts
Federal agencies
Repeal of Coordination Council Pro IP Act 2008
“Grey Literature”
• Commercial sites with free content– IP news and content providers– Solutions providers • IP Solutions - Thomson Reuters
– Allied professions• PricewaterhouseCoopers
Statistics- Beyond US IP Offices
Patent Searching
• Most foreign patents not online• Critical to define search objective and budget• Dozens of patent platforms from open web to
proprietary• Specialty platforms for DNA sequences and
chemical structures • Two distinct but interrelated stages– SEARCH– ANALYSIS
Premium Patent Searching
• Thomson Innovation• Lexis Total Patent• STN • Genomequest• Questel Orbit• Patbase• Innography • Wexis
Open Web Patent Searching
• WIPO• National Offices• Regional Offices• NGOs– Many countries offer these
• Free to premium spectrum• Evaluate the data sources• Evaluate history and legal status options• Evaluate the power of the search engine• Evaluate how to find “non-traditional”
trademarks• Evaluate capacity to process data
Options
• National and regional offices
Data on Lexis
Data on Westlaw
Copyright Searching
• Investigating the copyright status of a work– Remember the “bundle of rights” divisible– A focused search of a work's registrations,
renewals, and assignment history. • Unlike patents and trademarks, the Copyright
Office does not perform a search to determine whether a work is registerable.
• Searches are not necessary under the copyright code.
Searching Industry Specific Licensing Organizations
Staying up to date….
Jon R. Cavicchi, Intellectual Property Research Tools and Strategies Keeping Up To Date With IP News Services And Blogs: Drowning In A Sea Of
Sameness? 46 IDEA 453 (2006).
Email based newsletters
• Legal Publishers• Law Firms• Government sites• NGOs• Solutions providers • Academics/law schools• Blogs
• Websites of all types• Blogs • Wikis• Email – Also RSS feeds into emails
Lexis & Westlaw IP News
• Westlaw West Topical Highlights• IP News• Legal Newspaper IP articles• Mealey's Daily News Update• BNA PTC Law Daily, PTC Journal, World IP Report• Set up alert services in any database
UNH Law Premium Services
Professional Organizations
Law FirmsNewsArticles
WebinarsSocial tools &
content
Law SchoolsIntellectual PropertyAkron, University of, LL.M.Albany Law School, LL.M.Boston University, LL.M. Case Western Reserve University, LL.M.Chicago-Kent College of Law, LL.M.Dayton, University of, LL.M.; M.S.L.DePaul University, LL.M.Drake University, LL.M.; M.J.Fordham University, LL.M. George Mason University, LL.M.George Washington University, LL.M.Golden Gate University, LL.M.Houston, University of, LL.M.Indiana University-Indianapolis, LL.M.John Marshall Law School (Chicago), LL.M.; M.S.Michigan State University College of Law LL.M.; M.J.New Hampshire, University of, LL.M. San Francisco, University of, LL.M.Santa Clara University, LL.M.Seton Hall University, LL.M.Thomas M. Cooley Law School, LL.M.Washington, University of, LL.M.Washington University, LL.M.Yeshiva University, LL.M.
Solutions Providers
• Professional Organizations • State Bar IP Sections• Academic
Social Media
RU an IP TWEEP?
IP Blogs
• Most popular• Most informative• Most scholarly• Most useful
• How to find them• How to evaluate them• How to use them• How to search them • How to manipulate
them
Some evaluation questions• Who is the blogger? With so many blogs offering spotty or nonexistent “about”
pages, this may be a clue in itself. • What sorts of materials is the blogger reading or citing? • Does this blogger have influence? Is the blog well-established? Who and how
many people link to the blog? Who is commenting? Does this blog appear to be part of a community?
• Is this content covered in any depth, with any authority? • How sophisticated is the language, the spelling? • Is this blog alive? It there a substantial archive? How current are the posts? • At what point in a story’s lifetime did a post appear? Examining a story’s date may
offer clues as to the reliability of a blog entry. • Is the site upfront about its bias? Does it recognize/discuss other points of view?
(For certain information tasks–an essay or debate–bias may be especially useful. Students need to recognize it.)
• If the blogger is not a traditional “expert,” is this a first-hand view that would also be valuable for research? Is it a unique perspective?
• http://21cif.com/rkitp/assessment/v1n5/blog_evaluation_assessment_v1n5.html
Finding IP Blogs
• Often first instance of IP news• Most law firms and IP organizations tweet• Links in tweets may be only place to get a doc• “Tweets get buried and lost…Twitter is useless”– Set up two twitter accounts• One for PR or fun & other to follow select few
• Tweets are now searchable on Google?
Linkedin Groups
Firefox Addons
There’s an app for that….
15 Sites in 15 Minutes
http://www.uspto.gov/
http://www.google.com/patents
