United States Intellectual Property Law
Overview of US Intellectual Property Law
The United States maintains one of the most sophisticated and influential intellectual property regimes globally, rooted in the Intellectual Property Clause of the Constitution (Article I, Section 8, Clause 8), which empowers Congress to secure for limited times the exclusive rights of authors and inventors to their respective writings and discoveries. US IP law comprises four primary branches: patents, copyrights, trademarks, and trade secrets, each governed by distinct federal statutes and supplemented by state law. International harmonisation is achieved through adherence to the Berne Convention, the Paris Convention, the TRIPS Agreement, and the Madrid Protocol.
Patent Law
Utility Patents under the Patent Act
Utility patents are governed by the Patent Act codified at 35 USC §§ 101-112. To be patentable, an invention must satisfy the threshold requirements of subject matter eligibility under § 101, which encompasses any new and useful process, machine, manufacture, or composition of matter, including improvements thereof. The Supreme Court has implied exceptions for laws of nature, natural phenomena, and abstract ideas under the Alice/Mayo two-step framework.
Novelty is required under § 102, which mandates that the invention must not have been patented, described in a printed publication, in public use, on sale, or otherwise available to the public before the effective filing date. The America Invents Act of 2011 fundamentally restructured the US from a first-to-invent to a first-inventor-to-file system, aligning the US with global patent norms. Section 102 now includes a limited prior art exception for disclosures made one year or less before filing if the disclosure was by the inventor or a joint inventor.
Non-obviousness under § 103 provides that a patent may not be obtained if the differences between the claimed invention and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art. The Graham factors guide this assessment: the scope and content of the prior art, the differences between the prior art and the claims, the level of ordinary skill, and secondary considerations such as commercial success, long-felt need, and unexpected results.
The utility requirement demands that the invention have a specific, substantial, and credible utility. Enablement under § 112 requires the specification to enable any person skilled in the art to make and use the invention without undue experimentation. The best mode requirement obliges the inventor to disclose the preferred embodiment of the invention.
The America Invents Act 2011
The Leahy-Smith America Invents Act (AIA), effective 16 March 2013, represented the most significant reform of US patent law since 1952. The transition from first-to-invent to first-inventor-to-file eliminated interference proceedings in favour of derivation proceedings. The AIA introduced post-grant review (PGR), inter partes review (IPR), and covered business method review (CBM) administered by the Patent Trial and Appeal Board (PTAB), providing streamlined administrative mechanisms for challenging patent validity.
Design Patents
Design patents protect ornamental designs of articles of manufacture under § 171. The term is 15 years from grant (for applications filed after 13 May 2015). The standard for infringement is whether an ordinary observer would be deceived into believing the accused design is the same as the patented design.
Pharmaceutical Patents and Hatch-Waxman
The Drug Price Competition and Patent Term Restoration Act of 1984 (Hatch-Waxman) balances pharmaceutical innovation with generic competition. It permits generic manufacturers to file an Abbreviated New Drug Application (ANDA) with a paragraph IV certification challenging a patent’s validity or non-infringement. The Act provides 30-month stays of ANDA approvals during litigation and grants patent term extensions of up to five years to compensate for regulatory delays during FDA approval.
Patent Infringement
Patent infringement under § 271 includes direct infringement (making, using, offering to sell, selling, or importing the patented invention), induced infringement, and contributory infringement. The doctrine of equivalents permits a finding of infringement when the accused product performs substantially the same function in substantially the same way to achieve substantially the same result, even if literal infringement is absent. The prosecution history estoppel limits the doctrine’s application.
USPTO and PTAB
The United States Patent and Trademark Office (USPTO), an agency of the Department of Commerce, examines patent and trademark applications. The PTAB conducts administrative trials including IPR, PGR, and derivation proceedings, and hears appeals from examiner rejections.
Copyright Law
The Copyright Act of 1976, codified at 17 USC §§ 101-1401, protects original works of authorship fixed in any tangible medium of expression. The requirement of originality demands independent creation plus a minimal degree of creativity (Feist Publications v. Rural Telephone Service, 499 US 340 (1991)). Fixation requires the work to be sufficiently permanent or stable to permit it to be perceived, reproduced, or communicated for more than a transitory duration.
Exclusive Rights
Section 106 confers six exclusive rights: reproduction, distribution of copies, public performance, public display, preparation of derivative works, and the digital audio transmission right for sound recordings. Each right may be licensed separately.
Fair Use
The fair use defence under § 107 permits unauthorised use of copyrighted works for purposes such as criticism, comment, news reporting, teaching, scholarship, or research. The four statutory factors are: (1) the purpose and character of the use, including whether it is of a commercial nature or for nonprofit educational purposes and whether it is transformative; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the work as a whole; and (4) the effect of the use upon the potential market for or value of the work.
Digital Millennium Copyright Act 1998
The DMCA implements the WIPO Copyright Treaty and WIPO Performances and Phonograms Treaty. Title I prohibits circumvention of technological protection measures. Title II provides safe harbour provisions for online service providers (OSPs) under § 512, shielding them from monetary liability for infringing content uploaded by users if they comply with notice-and-takedown procedures, maintain a repeat infringer policy, and do not receive a financial benefit directly attributable to infringing activity.
Term and Works Made for Hire
The general term is the life of the author plus 70 years. For anonymous works, pseudonymous works, and works made for hire, the term is 95 years from publication or 120 years from creation, whichever is shorter. The work for hire doctrine under § 201(b) provides that the employer or commissioning party is considered the author and owns the copyright ab initio, applying to works prepared by an employee within the scope of employment or certain categories of commissioned works.
Trademark Law
Federal trademark law is governed by the Lanham Act, 15 USC §§ 1051-1141. Trademarks protect source-identifying symbols, including words, names, symbols, devices, sounds, scents, and colours.
Distinctiveness Spectrum
Trademarks are classified along a spectrum of distinctiveness: fanciful and arbitrary marks are inherently distinctive; suggestive marks require imagination to connect the mark to the goods; descriptive marks require acquired distinctiveness (secondary meaning) to be protectable; generic terms are never protectable.
Likelihood of Confusion
Infringement under § 1114 and § 1125(a) is determined by the likelihood of confusion among consumers as to the source, affiliation, or sponsorship of goods or services. The Polaroid factors, established in Polaroid Corp. v. Polarad Electronics Corp., include: the strength of the mark, the degree of similarity between the marks, the proximity of the products, the likelihood of bridging the gap, evidence of actual confusion, the defendant’s good faith, the quality of the defendant’s product, and the sophistication of buyers.
Dilution
The Trademark Dilution Revision Act of 2006 (TDRA) provides protection for famous marks against dilution by blurring or tarnishment, regardless of likelihood of confusion. Dilution by blurring impairs the distinctiveness of the famous mark, while dilution by tarnishment harms the reputation of the famous mark.
Federal Registration and Incontestability
Registration with the USPTO confers procedural and substantive benefits, including constructive nationwide priority, prima facie evidence of validity and ownership, and exclusive right to use. After five years of continuous use, the mark may achieve incontestable status under § 1065, limiting grounds for cancellation. The term of trademark registration is 10 years, renewable indefinitely upon filing a declaration of continued use.
Trade Secrets
The Defend Trade Secrets Act of 2016 (DTSA) creates a federal private civil cause of action for trade secret misappropriation, supplementing state law under the Uniform Trade Secrets Act (UTSA) adopted by 48 states. A trade secret is information of independent economic value that is not generally known and is subject to reasonable secrecy measures. The DTSA permits ex parte seizure orders and awards of damages including royalties and exemplary damages up to twice the actual damages for willful misappropriation.
International Framework
The US adheres to the Berne Convention for copyright (providing national treatment and automatic protection), the Paris Convention for industrial property (providing priority rights), and the TRIPS Agreement (setting minimum standards enforced through the WTO dispute resolution mechanism). The US acceded to the Madrid Protocol in 2003, enabling US trademark applicants to seek international registration through a single application to the WIPO.