Introduction to IP Research Tools & Strategies

Law school is a fantasy land• Unlimited access to most expensive tools• The growth of one search solutions (Next & Advance)• 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.

• Get to know 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

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

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

• Heres 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 theres 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 • Technology research management - corporate attorney, trademark attorney, IP "lite" chief researcher, nonprofit eg university tech attorney, patent litigator, other IP litigator transfer office• in-house • Data manager - librarian, Thomson• law firm Reuters, WIPO/EPO/USPTO government• Transactional IP professional - corporate website management business development, university technology • Litigation support - other than transfer licensing specialist investigations, data management, translations• Investigator - eg. counterfeit, Kroll, Marksmen and illustration• Negotiator, mediator, arbitrator • Docketing and IP administration - supervisor, designer of software• Government official (CPI, CPA, etc.)• - registrar of rights (patent • Translator (within firm, or in global translation examiner, trademark examiner, copyright company) registrar) • Illustrator• -enforcement official (customs, law enforcement) • IP trader - auctioneer, broker, securitizer (ICAP Ocean Tomo, RoyaltyPharma, etc.)• - legislative (staff) • Human Resources department - overseeing• - regulator creative staff with appropriate employment• NGO - advocacy (US, Geneva, other countries) agreements etc.• Education - professors, trainers • Accounting - Big accounting firm consulting• Academic IP researcher - professors, law and evaluation school and university economics etc. faculty • Finance - due diligence and research staff

Life Cycle of IP

Value Extraction Chain

IP Business Transactions

What are you managing?

Core IP Legal Research Sources

• 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

Secondary sources of IP treatises• Lexis Publishing• West Publishing• Aspen/Kluwer• CCH• BNA• Oxford University Press• Edward Elgar

• 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?

Big 3• 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…

Periodicals• 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 – Findlaw• Spectrum of web journals and newsletters both legal and interdisciplinary

IP Content : Lexis & 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

Better, different, same?•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 foreign registrations – Docket tracking and documents – People data

Customize Lexis and Westlaw for IP• Reading the menus teach you the sources!• Westlaw – Area of practice tabs – Create a tab for areas like art & entertainment law – Favorites – IP Topics & Key Numbers• Lexis – Area of practice tabs – Recent Favorites

No patent or trademarksearching using Next or Advance

UNH Law IP LibraryPhysical and virtual holdings

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 IPLibrary arenowhere in e-format

UNH Law Premium IP Web Services

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

Full spectrum• Legal Research• Fact research• Patent, Trademark, Copyright Registrations – Prosecution History• News – Legal – General

Categories of IP 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

• Commercial sites with free content – IP news and content providers – Solutions providers • IP Solutions - Thomson Reuters – Allied professions • PricewaterhouseCoopers

Legal Research

http://www.uspto.gov/

http://www.copyright.gov/

http://www.wipo.int/

http://www.ipmall.info/

http://www.ipmenu.com/

http://www.ipfrontline.com/

http://www.inta.org/

http://www.aipla.org

http://www.ipo.org/

http://www.epo.org/

http://lp.findlaw.com/

http://www.iphandbook.org/

http://www.google.com/patents

Statistics- Beyond US IP Offices

• 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• Questel Orbit• Patbase• Innography• Wexis

Free patent searching• National & regional authorities – List on WIPO web• NGOs• Commercial give away – Anyone can buy the data feeds

Trademark Searching• 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 works 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 ResearchTools and Strategies Keeping Up To Date With IPNews 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

RSS Feeds• Websites of all types• Blogs• Wikis• Email – Also RSS feeds into emails

• Westlaw West Topical Highlights• IP News• Legal Newspaper IP articles• Mealeys Daily News Update• BNA PTC Law Daily, PTC Journal, World IP Report• Set up alert services in any database

UNH Law Premium Services

Social MediaRU an IP TWEEP?

IP Blogs• Most popular • How to find them• Most informative • How to evaluate them• Most scholarly • How to use them• Most useful • 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

Don’t forget RSS to collect blogs

Twitter• 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

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Introduction to IP Research Tools & Strategies

by Franklin Pierce IP Center at UNH School of Law

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