Governing Law, Courts and Agencies

Terms:

United States Code:
The written body of legislation that has been duly passed by Congress and remains valid federal law. The Code is divided into 50 titles, each of which deals with a distinct area of law.

United States Copyright Office:
The place where claims to copyright are registered and where documents relating to copyright may be recorded when the requirements of the copyright law are met. The Office also:

provides expert assistance to Congress on intellectual property matters.
advises Congress on anticipated changes in U.S. copyright law.
analyzes and assists in drafting copyright legislation and legislative reports.
provides and undertakes studies for Congress.
offers advice to Congress on compliance with international agreements.

United State Patent and Trademark Office:
The agency in the United States Department of Commerce which provides patent and trademark protection to inventors and businesses for their inventions and product identification.

Patent Electronic Filing System:
An electronic system for submitting patent applications, and pre-grant publication submissions to the USPTO via the Internet. The system was developed and is maintained as part of the USPTO’s website.

Library of Congress:
The largest library in the world, with more than 130 million items on approximately 530 miles of bookshelves. In addition, it serves as the research arm of Congress. It houses copies of every work ever duly registered with the copyright office.

Treaty:
An agreement between the United States and one or more foreign countries that has been ratified by the Senate. A ratified treaty has the full force of federal law in American law.

Executive Agreement:
An agreement between the President of the United States and the leader of a foreign country that has not been ratified by Congress. An executive agreement is binding as federal law only where it is not inconsistent with any other federal law.

Federal Statutes Involved in the Protection of Intellectual Property

As discussed in the previous section, federal law dominates in the area of intellectual property. This manifests itself in that, of the 50 titles that comprise the entire United States Code (which is the entirety of Congressional legislation), more than two complete titles are devoted to intellectual property law.

Title 17 of the United States Code is devoted to copyright law. It consists of thirteen chapters and covers all areas of copyright law, including the rules governing formation of copyrights, maintenance requirements, duration of protection, etc. The chapter also establishes the “United States Copyright Office” (discussed later in this section), and it contains special chapters which deal with complex issues of copyright law, such as the protection of semiconductor chip design (see 17 USCS § 902) and protection of digital and sound recordings.

Title 35 of the United States Code addresses patent law. The title is divided into four components dealing with a gamut of subjects, including the functioning and authority of the United State Patent and Trademark Office (“USPTO”), procuring patents, protecting patents and compliance with the Patent Cooperation Treaty, which was negotiated and ratified by more than 125 countries in Washington, D.C., in 1970. Note that, as a treaty that was ratified by the U.S. Senate, it has the full force of federal law.

Trademarks law does not have its own Title in the U.S. Code. However, Chapter 22 of Title 15 (“Commerce and Trade”) is devoted to Trademark law. In addition, intellectual property law is dealt with in other contexts throughout federal law. See, e.g., 18 USCS § 1832 (making it a federal crime to steal trade secrets).

Case Law for Intellectual Property Cases

Since federal courts have exclusive jurisdiction over most intellectual property cases, the place to look for case law that is relevant to intellectual property law is usually in the federal courts. Any federal district court can hear a case involving intellectual property law and any of the Circuit Courts of Appeals may hear appeals of intellectual property cases. However, decisions made by the judicial branch of the United State Patent and Trademark Office are appealed directly to the United States Court of Appeals for the Federal Circuit (a special federal appeals court in Washington that hears cases in certain areas of law). Copyright and trademark cases provide great illumination on the law of copyrights and trademarks, and no research on an issue in these areas would be complete without a thorough examination of the relevant case law.

The United States Patent and Trademark Office

The United State Patent and Trademark Office (“USPTO”) is an administrative agency in the federal government which functions as part of the Department of Commerce. The USPTO is tasked with the responsibility of promulgating procedures under which patents can be sought and obtained, and with examining submitted patent applications.

The USPTO also disseminates information on how to apply for patent protection. Its website, www.uspto.gov is updated frequently and has a wealth of useful information to attorneys and laypeople seeking a patent. Patent applications can also be submitted online through the USPTO’s website’s “Patent Electronic Filing System.” (Similarly, trademarks can be filed online through the USPTO “Trademark Electronic Application System.”)

The USPTO’s director (who is an Undersecretary of Commerce; recall that the USPTO is really a subdivision of the Department of Commerce), as with all administrative agencies, is appointed by the President and must be confirmed by the Senate before taking office. In addition, the Secretary of Commerce appoints a Commissioner of Patents, who is responsible for managing the patent operations. The Secretary of Commerce also appoints a Commissioner of Trademarks, who is responsible for managing the USPTO’s trademark operations.

The USPTO also contains a judicial structure to which denials of patent applications can be appealed. This consists of the Patent Trial and Appeal Board. The Board consists of more than 50 experts in administrative law and patent law. A three judge panel is chosen to hear each appeal brought by an aggrieved applicant.

However, the USPTO does not actually enforce patents. The enforcement of patents is left to the holders of the patents and must be done in federal court.

The United States Copyright Office

Unlike the USPTO, the United States Copyright Office is not its own administrative agency. It is a branch of the Library of Congress. Its mission is to promote creativity by administering and sustaining an effective national copyright system. Its work is much less complex than that of the USPTO because:

almost any work can be copyrighted, and thus, making the determination as to whether something should be approved for copyright protection is usually very simple.
filing is not necessary to achieve copyright protection; therefore, the process of applying for and receiving a copyright is not as critical as it is for a patent.

The Copyright Office also serves the following functions:

It administers the copyright law by evaluating each submission to determine whether it is eligible for copyright protection.
It provides information to the public regarding copyrighted works.
It builds up the collection of the Library of Congress. A copy of every work that is registered with the department must be made available for the Library of Congress to keep.

For more information on the U.S. Copyright Office, see its website at www.copyright.gov/

Treaties and International Law

International law is not inherently binding on U.S. citizens and it is not generally enforceable in U.S. courts. However, if the President enters into a treaty and the Senate ratifies it, that treaty has the full force of federal law. If the President agrees to enter into an agreement with a foreign country (an “Executive Agreement”), that agreement also has the force of federal law, except that it is automatically overridden by any inconsistent federal law. Thus, the treaties and bodies of international law that we need to concern ourselves with most are those that have been agreed to by the President and ratified by the Senate.

Some examples of international agreements which affect intellectual property law are:

The Paris Convention: This agreement was originally entered into by 11 countries (mostly European) in 1883. It has been revised many times since and as of today, 177 countries are signatories to the treaty. The treaty calls for member countries to respect the patents issued by other member countries and provides remedies for those aggrieved by violations of their intellectual property rights.

The convention is administered and governed by the World Intellectual Property Organization (“WIPO”), which is based in Geneva, Switzerland. In spite of its strong provisions, the organization has no effective judicial arm, and the convention’s enforcement in the United States can only be sought through the federal courts. The federal courts will recognize and apply principles of the Convention, but only where they do not contradict federal law.

The Patent Cooperation Treaty (dealing with patents), the Trademark Law Treaty (dealing with trademarks), and the WIPO Copyright Treaty (dealing with copyrights) are agreements that deal with specifics of filing for and receiving recognition of an intellectual property right by the World community. However, there is no such thing as an “international patent” and legal protection for intellectual property must be sought in federal courts.

Other agreements, such as the North American Free Trade Agreement (NAFTA) and the Trade Related Aspects of Intellectual Property Rights (TRIPS) also have clauses that affect international intellectual property rights.

The effect of various international treaties on copyright, trademark, and patent law in the United States will be more fully addressed in later chapters.