Overview of IP Legal Process

Overview of Legal Process
Most Relevant to Intellectual Property

Index

Basic Legal Process
Jurisdictional Source of Rights
Federal Jurisdiction
Civil Appeals
Need for Administrative Action
Administrative Jurisdiction
Inter Partes Matters
Intramural Appeals
Agency Process Diagram
Court Review Generally
Collateral Review

Basic U.S. Legal Process Diagram

Those who can use image maps may click on any of the smaller boxes to go directly to explanations. Regardless, further explanation of various terms appears below.

Legislation
Subject to Constitutional limitations, e.g., Art. 1, § 8, cl. 8, legislation is the source of all administrative power, governs most other executive action and can supersede common law.
Legislation is of major importance at the federal level, but one must always be on the lookout for state statutes as well. Basic Process Diagram

Common Law
Common law plays the biggest role in state tort or contract causes of action, e.g., for malicious interference with commercial expectancies, trade libel, or misappropriation of trade secrets.
It is important at the federal level; see, e.g., Community for Creative Non-Violence vs. Reid, 109 S.Ct. 2166, 2173 (1989).
Common law is subject to Constitutional limitations, e.g., protection for free speech, and can always be changed by legislation. Basic Process Diagram

Executive Action & Public Litigation
This is not given much attention here but can involve such things as criminal enforcement of the copyright law. However, administrative action -- a form of executive action (so indicated by the dotted box) -- is adressed in considerable detail below. Basic Process Diagram

Jurisdictional Source of Non-Administrative Rights

Administrative Process
A considerably expanded treatment following a more detailed diagram appears below.

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Jurisdictional Source of Rights

State Law
(Common law plays the biggest role.)

Contract and quasi contract actions to enforce:
- a duty to maintain confidentiality
- other promises, e.g., to pay for information.
Tort action to prevent or redress, e.g.:
- source misrepresentation
- other misrepresentation
- malicious interference

Federal Law
(Statutory law plays the major role.)

To prevent others from copying goods or services
- Patents -- sole source is 35 U.S.C.
- Copyrights -- sole source is 17 U.S.C.
To prevent misrepresentations -- see generally 15 U.S.C. §§ 1051 et seq.

Federal Jurisdiction over State Causes of Action

Ordinarily federal jurisdiction is available under 28 U.S.C. § 1332 if the parties are from different states and the amount in controversy exceeds $50,000.
State causes of action may also be addressed when a federal court has jurisdiction under 28 U.S.C. § 1338(b).
However, in both cases, the court must apply state law, determining, if necessary, which law to apply to particular causes of action.

Federal Causes of Action Generally

Arbitration under title 9 of the U.S. Code is always a possibility (as it usually also is under state law to enforce state causes of action); see also 35 U.S.C. § 294.
Suits are brought in federal district court -- see generally 28 U.S.C. § 1338, noting particularly the second sentence; also 15 U.S.C. § 1121. [But which law is applied in the case of a common law trade-mark: state or federal common law?]

Jurisdiction in Civil Appeals

State appeals usually go to state appeals courts, rarely to federal courts.
Most federal appeals go to circuit courts of appeal other than the Court of Appeals for the Federal Circuit [CAFC].
The CAFC has jurisdiction over infringement appeals only in patent cases. See 28 U.S.C. § 1295; see also 15 U.S.C. § 1121(a).

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Administrative Action

Is unnecessary for:

most state actions, but state trademark registration may affect rights or remedies.
federal actions under 15 U.S.C. § 1125(a) [Lanham Act § 43(a)].

Is helpful for trademarks:

at both state and federal levels, by supplementing common law remedies with, e.g., treble damages, and at the federal level, with exclusionary orders.
at the federal level, by extending rights, e.g., to, as yet, unoccupied markets or creating a presumption of secondary meaning.
at the federal level, by providing a basis for foreign registration.

Is necessary to:

have any rights at all under the patent laws.
enforce copyrights, in the case of U.S. citizens, even though such rights vest when a qualifying work is fixed. [But see § 411(a), 2d and 3d sentences.]
To have the advantages provided by registration of trademarks on the principal federal register.

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Administrative Jurisdiction

Patent and Trademark Office Basics

Legislation creates the PTO as a "dependent" agency within the U.S. Department of Commerce -- see 35 U.S.C. §§ 1-7. See also 35 U.S.C. § 31-33, 5 U.S.C. § 500(b) and 37 C.F.R. Part 10 (re admissions and disciplinary procedures).
Patent applications are examined under 35 U.S.C. §§ 131-35.
Applications for trademark registration are examined under 15 U.S.C. § 1051.

Copyright Office Basics

Legislation empowers the Librarian of Congress as an "independent" official who is appointed by the President with Senate approval -- see 2 U.S.C. § 136.
The Register of Copyright is under the jurisdiction of the Librarian of Congress -- see 17 U.S.C. § 701.
Jurisdiction to examine copyrights for which registration is sought -- see 17 U.S.C. §§ 409-410.

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Administrative Process Diagram

Those who can use image maps may click on any of the smaller boxes to go directly to explanations. Regardless, an index to explanation appears below the diagram.

This diagram is highly simplified; e.g., it ignores possible loops. An index to its topics appears below.

Dotted lines indicate that, e.g., rulemaking, inter partes disputes or intramural appeals may not be involved.As explained elsewhere, however, direct court review is not possible without exhausting intramural appeals. In this context, enforcement and review usually occurs in private litigation.

Legislation and administrative action
Administrative rulemaking
Ex parte examination
Inter partes disputes
Intramural appeals & petitions
Court Review of Administrative Adjudications
Collateral Review in Infringement Litigation

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The Importance of Legislation to Administrative Action

All administrative agencies are created by legislation. Legislation is the source of all agency power. Legislation is also generally governs administrative processes and procedures.

The power to appoint or remove agency personnel generally resides in the executive branch. However, legislatures exercise control subject to only a few restrictions such as executive veto and may alter an agency's powers or even abolish it.

Basic Process Diagram
Administrative Process Diagram

Administrative Rulemaking

This topic is a major part of the Administrative Process courses. In the context of this discussion, it must suffice to indicate that agencies generally have inherent power to make rules and are often given explicit power to do so. See, e.g., 35 U.S.C. § 6.

Courts review the process by which rules are promulgated as well as the substantive content of rules. The substance must conform, e.g., to the specific statute in question, and, unless the specific statute provides to the contrary, the process is controlled by 5 U.S.C. See, e.g., 17 U.S.C. §§ 701(d) and 702.

Basic Process Diagram
Administrative Process Diagram

Ex Parte Examination of Applications

PTO, patents -- see generally, 35 U.S.C. §§ 131-35.

PTO, trademarks -- see generally, 15 U.S.C. § 1051.

Basic Process Diagram
Administrative Process Diagram

Court Review of Administrative Adjudications

Prosecution of any intramural appeals is ordinarily required.

The law of the decision must be consistent with legal authority, i.e.,the constitution, general and specific statutes, rules and regulations, and prior decisions. [More detail follows.]

If no specific review process is provided, general provisions govern -- see 5 U.S. Code §§ 701-706 and 28 U.S.C. § 1331.

Basic Process Diagram
Administrative Process Diagram

Sources of (or limits to) administrative authority

Constitutions -- compare, e.g., federal Art. I, § 8, cl. 8 with cl. 3.

Legislation creating the agency or empowering it, e.g., 35 U.S.C.

General legislation, e.g., Administrative Procedure Act, 5 U.S.C.

Agency rules and practices -- 37 C.F.R.; also, e.g., "MPEP."

Court and agency decisions interpreting all of the above.

Basic Process Diagram
Administrative Process Diagram

Specific Provisions for Direct Court Review

PTO, patents:

In CAFC -- see 35 U.S.C. § 141.
In U.S. District Court (D.C.) -- § 145.

PTO,trademarks:

in CAFC -- see 15 U.S.C. § 1071(a).
in generally unspecified federal district court -- § 1071(b).

Copyright Office: in context of infringement -- see 17 U.S.C. §411(a). Basic Process Diagram
Administrative Process Diagram

Review of Factual Determinations

Ordinarily facts determined in administrative decisions have a great degree of presumptive validity under the "capricious and arbitrary" or "substantial evidence" standards mentioned in 5 U.S.C. However, the CAFC (with no specific statutory provisions governing) uses the more liberal "clearly erroneous" standard. Does the CAFC's expertise justify closer scrutiny than otherwise?

Basic Process Diagram
Administrative Process Diagram

Inter Partes Disputes

PTO, patents: Interferences only -- see 35 U.S.C. § 131.

PTO, trademarks: concurrent use, oppositions, cancellations, and interferences -- see 15 U.S.C. §§ 1052(d), 1063, 1064, and 1066-68, respectively.

Basic Process Diagram
Administrative Process Diagram

Intramural Appeals and Petitions

PTO, patent appeals (generally, substantive questions): Board of Patent Appeals -- 35 U.S.C. § 134.

PTO, trademark appeals: Trademark Trial and Appeal Board -- 15 U.S.C. § 1070.

PTO, generally: petitions (generally matters of form or procedure) to the Commissioner.

Basic Process Diagram
Administrative Process Diagram

Collateral Review in Infringement Litigation

Administrative action creates various levels of validity presumptions. Yet, defendants may challenge validity -- as well as scope of rights and other matters related to infringement.

While 35 U.S.C. §§ 301-307 provide for referral of questions of patent validity (only) to the PTO, reexamination is not mandatory and may not be used. [Many other countries, however, provide that validity may be reviewed only within their patent office.]

Basic Process Diagram
Administrative Process Diagram

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Administrative Process Syllabus
Fundamentals of IP Syllabus

Modified 4/26/97
URL: http://www.piercelaw.edu/tfield/iip2.htm

Overview of Legal Process Most Relevant to Intellectual Property

Basic U.S. Legal Process Diagram

Jurisdictional Source of Rights

Administrative Action

Administrative Jurisdiction

Administrative Process Diagram

Overview of Legal Process
Most Relevant to Intellectual Property