Most of these selections were originally prepared
by Jon Cavicchi and Cindy Landau, librarians at Franklin Peirce Law Center
Library. Annotation of each source has been prepared by Juhong Kim.
Secondary authority is not the law itself, it is an analysis or explanation of prime authority. Secondary sources are most useful when used as a tool to:
1. Chisum on Patents
- Print version has 13 volumes with 96 pages of index and 597 pages, plus a Table of Cases
- Print version last updated in March 1997
- Cited 326 times in WESTLAW USPO database
- Tthe U.S. Supreme Court has cited Chisum in the following cases:
- Warner-Jenkinson Co., Inc. v. Hilton Davis Chemical Co., 117 S.Ct 1040 (1997);
- Bonito Boats Inc., v. Thunder Crafter Boats, Inc., 489 U.S. 141 (1989)
- 8 cases cited by CAFC or Circuit Courts around the country since 1996
- Available on Lexis PATENT/CHISUM
- Also available on Matthew Bender Authority IP Library
2. Walker on Patents
- Print version has 11 volumes with 155 pages of Index and 380 pages of Table of Cases
- Print version last updated in 1991
- Cited 982 times in WESTLAW USPO database
- The U.S. Supreme Court has cited Walker in the following cases:
- Markman v.. Westview Instruments, Inc., 116 S.Ct 1384 (1996)
- Diamond v. Chakrabatry, 447 U.S. 303 (1980)
- Graham v. John Deere Co. Of Kansas City, 383 U.S. 1 (1966)
- Aro MFG. Co. V. Convertible Top Replacement Co., 377 U.S. 476 (1964)
- Sear, Roebuck & Co. V. Stiffel Co., 376 U.S. 225 (1964)
- Great Atlantic & Pac. Tea Co. V. Supermarket Equipment Corp., 340 U.S. 147 (1950); and
- 5 more cases from 1946 to 1949
- Other federal courts continue to cite Walker recently, although less than Chisum; only 4 cases cited by CAFC or Circuit Courts since 1996
3. Landis on Mechanics of Patent Claim drafting
- One volume looseleaf service published by the Practicing Law Institute
- Statutory interpretation of patent law, how to write a patent application, claims for different types of invention
- Indexes include examples of claim drafting, selective MPEP and statutory law
4. How to Write a Patent Application
- One volume loose leaf service published by Practicing Law Institute, last updated in Nov 1996
- How to write patent application, claims drafting, drawings, novelty search, chemical inventions, biotechnology inventions, foreign filing, software, plant and electrical patent applications
- Appendixes include selected provisions of title 35 of USC, CFR and Manual of Patent Examining Procedure
5. Patent Claims
- 3 bound volumes with 1994 cumulative supplement written by Deller
- Historical development of claims, different types of claims for various inventions with detailed samples, classification
6. Patent Office Rules and Practice
- 9 volumes looseleaf published by Matthew Bender. Last updated in 1996
- PTO rules and procedures, disclosure requirement with case laws, PTO notices from 1964 to present, selected CFRs, complete MPEP, patent and patent related USC and Patent Cooperation Treaty
7. Patent Law Handbook
- Soft bound one volume written by Brantly 1996-7 edition
- Provides "quick facts and answers to patent law questions based on the most recent decisions"
- Chapters devoted to claims, infringement, defenses, remedies, pretrial and trial issues, practice before the PTO
1. McCarthy on Trademarks
- Print version (5 volumes) last updated in 1997 with 133 pages of Index and 351 pages of Table of Cases
- Cited 1059 times in WESTLAW USPO database
- The U.S. Supreme Court has cited Walker in the following cases:
- Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159 (1995)
- Two Pesos, Inc. v. Taco Cabana, Inc, 505 U.S. 763 (1992)
- K Mart Corp v. Cartier, Inc., 486 U.S. 281 (1988)
- San Francisco Arts & Athletics, Inc. v. U.S. Olympic Committee., 483 U.S. 522 (1987)
- Dowling v. U.S., 473 U.S. 207 (1985)
- Park 'N Fly v. Dollar Park and Fly., 469 U.S. 189 (1985); and
- Inwood Laboratories Inc. v. Ives Laboratories, Inc., 465 U.S. 844 (1982)
- Other federal courts continue to cite McCarthy heavily: 10 cases cited by CAFC or Circuit Courts in 1997 alone
2. Gilson on Trademark Protection and Practice
- Last updated in Nov 1996, 5 volumes with 51 pages of index
- One volume is devoted to legislative history section by section analysis of the Lanham Act.
- The other volume is for House and Senate Reports and Letters
- Cited twice by federal district courts
- Available on LEXIS TRADEMARK/GILSON
3. Trademark and Unfair Competition Law: Cases and Materials
- Written by Jane C. Ginsburg, et al of Columbia Law School; one bound volume with a pocket part
- Last updated in Jan 1992
- Not a treatise, but nonetheless cited in the Supreme Court case in Qualitex
4. Kane: Trademark Law: A Practitioner's Guide
- General overview of trademark law including types of marks , likelihood of confusion, registering and maintaining trademarks
- Appendixes include various PTO forms (declaration of use, assignment, application fees, etc)
- Slowly updated; the second edition in 1991
5. Trademark law and Practice Forms
- Four volumes written by Kramer and Brufsky, practicing attorneys, last updated in Oct 1996
- Rules and practice in the PTO on application for registration, drawings, specimens, classification, model forms thereof, appeals from decisions on trademark registration, writ of Certiorari to the U.S. Supreme Court rules, alternative to litigations--cease and desist letters and coexistence agreements
6. Protecting Trade Dress
- One volume bound book with 1996 cumulative supplement
- Written by Dorr (practitioner) and Munch (Prof of Univ. Denver College of Law)
- Exclusively focused on law of trade dress, production configuration. How to prosecute trade dress cases, doctrine of functionality, International Trade Commission and Customs rules and procedures. Land mark case law discussions.
7. State Trademark and Unfair Competition Law
- One volume looseleaf published by the U.S. Trademark Association
- Summaries of the applicable law of the 50 states, District of Columbia, and Puerto Rico, and case law for each states, Uniformed Deceptive Trade Practice Act, state registration. Appendix includes a model state trademark bill
- Last updated in Feb 1997
1. Henn on Copyright Law: A Practitioner's Guide
- Bound book written by Prof. Henn of Cornell Law School
- General overview of copyright law, outline of copyright statute, Copyright Office rules and regulations
- Appendixes include USC Title 17 (Copyright law), public law, Semiconductor Chips Protection Act of 1984, Copyright Office application forms, Circulars
- Third edition published in 1991
2. Nimmer on Copyright
- Six volumes last updated in 1996 with 84 pages of Index and 203 pages of Table of Cases
- Cited 928 times in WESTLAW USPO database
- The U.S. Supreme Court has cited Nimmer in the following cases:
- Campbell v. Acuff-Rose Music, Inc, 510 U.S. 569 (1994)
- Professional Real Estate Investors, Inc. v. Columbia Pictures Industries, Inc., 508 U.S. 49 (1993)
- Feist Publications, Inc. v. Rural Telephone Services Co., Inc., 499 U.S. 340 (1991)
- Stewart v. Abend, 495 U.S. 207 (1990)
- Community for Creative Non-violence v. Reid, 490 U.S. 730 (1989)
- Harper & Row Publishers, Inc. v. Nation Enterprises, 471 U.S. 539 (1985)
- Mills Music, Inc v. Snyder, 469 U.S. 153 (1985)
- Sony Corp of America v. Universal City Studios, Inc., 464 U.S. 417 (1984)
- Zacchini v. Scripps-Howard Broadcasting Co., 433 U.S. 562 (1977)
- Twentieth Century Music Corp v. Aiken, 422 U.S. 151 (1975); and
- Four other cases from 1968 to 1971
- Other federal courts continue to cite McCarthy heavily: 10 cases cited by CAFC or Circuit Courts in 1997 alone
- Available on CD-ROM in Matthew Bender IP library
- Also available in Lexis in COPYRIGHT/NIMMER
3. Abrams, H; The Law of Copyright
- Written by Prof. Abrams of the Univ. of Detroit School of Law
- Two volumes (looseleaf) covering the general overview of U.S. copyright law issues, but also includes a chapter on international copyright protection
- Last updated in June 1996
4. Broorstyn on Copyright
- Two volumes written by a practitioner in CA
- Chapter devoted to procedural aspects of copyright infringement suits together with general over view of copyright issues. A chapter devoted to international copyright relations. Appendixes include Copyright act of 1976, House Report, Digital Performance Right in Sound Recordings Act of 1955, Bern Convention materials, Universal Copyright materials, GATT and TRIPS materials.
- Last updated in Jan 1997
1. Milgrim on Trade Secrets
- The U.S. Supreme Court has cited Milgrim in
- Kewanee Oil Co. V. Bicron Corp., 416 U.S. 470 (1974)
- Circuit courts have cited Milgrim only 5 times since 1993
- Available in Lexis PATENT/MILGRM
2. Trade secrets Law
- Two volume looseleaf written by Jager (practitioner)
- Historical review of Anglo-American common law protecting secret ideas, modern development, trade secrets with respect to patents and copyright, how to establish a trade secret case, trade secret laws of selected states, Uniformed Trade Secrets Act
1. Modern Intellectual Property (2d ed)
- One volume book written by a NY practitioner, last updated in 1984
- Includes sections on trade secrets, trade marks, patent, copyright, unfair competition, computer software
- Two district courts have cited it since 1995
- Available on WESTLAW MODIP database
2. Restatement
- Unofficial, common law emulation of the codes of the civil law system
- Not mandatory or binding in the court
- Written by well-known scholars and jurists so may add more weights than other secondary sources because of the intellectual scrutiny that has been given to each section of the Restatement.
3. Restatement on Unfair Competition
- Basic "black letter" statement of law
- Available online through WESTLAW (REST-UNCOM) and LEXIS (2NDARY library RESTAT file) allowing full text search of Rules, comments, notes or browse table of contents, etc.
1. Index to Legal Periodicals (ILP)
- Begins in 1926
- Indexes include almost 700 legal periodicals by subject and author, both containing full information about the article.
- Indexes now include academic law reviews, journals, bar publications, and legal newspapers.
- Book reviews
- Post 1983 articles indexed under both subject and author
- Materials prior to 1983, bibliographic information appeared only under the subject entries, with the author entries providing cross-references to the subject headings.
- Available online through LEXIS, WESTLAW and DIALOG
- Available on CD-ROM--Wilsondisc which allows you to do a complete search on one place (by avoiding having to go through multiple printed volumes).
- For availability on LEXIS (LAWREV/ILP) and WESTLAW, check your subscription plans
2. Current Law Index
- Newer index than ILP, but only has information published after 1980
- Access to more than 800 legal and law-related periodicals, using detailed Library of Congress subject headings with extensive subheadings and cross-references.
- Print version has separate indexes for subjects and authors, as well as case and statute tables
- CLI does not include references to newspaper articles
- Book reviews
- Available online through LEXIS, WESTLAW & DIALOG
- Available on CD-ROM: LegalTrac which is broader in scope than CLI, including citations to several legal newspapers and to relevant articles in non-law periodicals.
3. Current Index to Legal Periodicals
- Produced weekly by the University Washington Law Library with a list of 100 subject headings, and about 475 university legal publications, and other law journals
- Provides full tables of contents of all journals indexed
- Available 4-6 weeks before other legal periodicals indexes such as ILP and CLI
- Available on WESTLAW: CLIP (current 6 wks)
- SmartCLIP: fee-based service that provides automated personalized e-mail delivery of CLIP
- E-mail message each week that focuses only on the subject headings and journals subscribers selected
- New individual subscribers: $120 annual fee including SmartCLIP only up to 25 profiles
http://law.house.gov/116.htm
- The U.S. House of Representatives Internet Law Library law book publishers and reviews
- Pointer boxes to publishers and individual books providing book reviews, ordering info, author info
http://www.sci3.com/msorders.html
- Sc(i)3 Great Ideas Bookstore
- IP books list about 20 boos, but title, author and price info only, government booklets and application forms, computer software are also available with ordering forms
http://access-iplaw.com
- Access IP law
- Pointer boxes to general IP topics, computer law, copyright law, Internet law, international IP, patent law, trademark law, trade secrets and books therein
- Includes book reviews and other books written by the author