IP Regulations and Procedure Manuals
by
Jeffrey B. Huter
Most IP practitioners deal with the United States Patent and Trademark Office (USPTO) and/or the United States Copyright Office (USCO) on a daily basis. These agencies promulgate regulations that have the force and effect of law. These regulations are organized yearly into Title 37 of the Code of Federal Regulation (37 CFR). With that said, IP practitioners have several different sources at their disposal from which they can obtain the various regulations of 37 CFR.These agencies also generate several documents pertaining to practice before the agencies. Three of these documents are of great concern to the IP practitioner and correspond to the three main substantive areas of IP. These documents are the Manual of Patent Examining Procedure (MPEP), the Trademark Manual of Examining Procedure (TMEP), and the Compendium II of the Copyright Office (Compendium).
While there is a voluminous amount of other materials that the USPTO and the USCO generate, this material in most regards is merely supplemental to the MPEP, the TMEP, and the CCO. As a result, most sources only contain a hodgepodge of these materials. Consequently, this paper compares different access points for only the CFR, the MPEP, the TMEP, and the Compendium.
I reviewed the following print publications for their respective coverage of Title 37 of CFR, the MPEP, the TMEP, and the Compendium:
A. Title 37 CFR1. Title 37 of the CFR from the Government Printing Office (GPO)
2. Manual of Patent Examining Procedure (GPO)
3. Manual of Patent Examining Procedure (Clark Boardman)
4. Trademark Manual of Examining Procedure (GPO)
5. Compendium (GPO)
6. Chisum on Patents (Matthew Bender)
7. Horwitz - Patent Office Rules and Practice (Matthew Bender)
8. Sheldon - How to Write a Patent Application (PLI)
9. Gilson - Trademark Protection and Practice (Matthew Bender)
10. McCarthy - Trademarks and Unfair Competition (Clark Boardman)
11. Nimmer on Copyrights
12. Copy Right Law Reporter
After review of these print products it is my conclusion that for coverage of 37 CFR an IP practitioner should purchase Title 37 from the GPO even if he had one or several of the other print publications at hand. This determination resulted from basically two factors.B. Procedural ManualsThe first factor is that 37 CFR may be purchased from the GPO for a measly $20.00. Since this publication is replaced annually, the IP practitioner would only need to spend $20.00 a year to purchase the new annual version in order to keep up-to-date. The net result is that the GPO Title 37 is a rather inexpensive product to obtain and to keep current.
The second influencing factor is that even though all of these publications contained portions of 37 CFR in appendices none of these publications explicitly state the dates of coverage. This in my opinion was a shame because all of these publications (except for the MPEP, TMEP, and Compendium) are routinely updated more frequently than GPO Title 37 CFR. As a result, these publications have the potential for being more current than the GPO Title 37 CFR. However, these publications offer no easy way of determining their currency. Therefore, due to this uncertainty and the inexpensive cost of the GPO Title 37 CFR, I believe that the IP practitioner would be better off purchasing the GPO Title 37 CFR to meet there IP regulation needs, thereby ensuring a certain level of known currency.
After review of these print products it is my conclusion that for coverage of the MPEP, the TMEP, and the Compendium an IP practitioner should purchase the respective manuals.
1. Compendium
For the Compendium this was an easy call because I was unable to obtain this publication in any form: print, on-line, CD-ROM, or Internet. I know it can be purchased from the GPO. Therefore, if an IP practitioner wants this document, then he will probably have to call the GPO to obtain it because there appears to be no other avenue at this point in time.
2. Manual of Patent Examining Procedure
Recommending a source for the MPEP is not as straight forward. Of the above publications only the 37 CFR, MPEP (GPO), MPEP (Clark Boardman), Chisum, Sheldon, and Horwitz address patents. 37 CFR and Chisum do not include MPEP materials, and Sheldon includes such a small subset of MPEP materials that these three publications can be easily eliminated as viable alternatives. Horwitz included the complete MPEP in an appendix but was one revision behind at the time of this paper. As a result, I eliminated Horwitz as a viable alternative for MPEP information.From a content standpoint, the GPO MPEP and the Clark Boardman MPEP are identical as far as I could tell. The only difference between the two publications is that the GPO MPEP is a lose-leaf service, punched for a 3-ring binder and the Clark Boardman MPEP is a bound volume. This gives the GPO MPEP an update advantage because the GPO MPEP can be updated by simply adding and removing effected pages whereas the Clark Boardman MPEP would have to be replaced.
This update advantage may not be a significant advantage once you realize that there is no set updating schedule for the MPEP and that only six editions have been released since 1949. However, the sixth edition which was released in January 1995 has been revised twice. Therefore, if the USPTO continues to follow its recent trend of frequent revisions, then this advantage may have some significance.
With that said, I would recommend the Clark Boardman MPEP because it uses a better grade of paper; the paper used for the GPO MPEP is quite flimsy and easily torn. As a result, the Clark Boardman MPEP should better withstand heavy usage and should less likely need to be replaced due to wear.
3. Trademark Manual of Examining Procedure
The TMEP has not been updated since May 1993. As a result, one would think that both Gilson and McCarthy would contain the TMEP. As it turns out, only Gilson contains the TMEP. Gilson contains the complete TMEP and is probably a viable alternative to the GPO TMEP if you already own a copy of Gilson. However, the GPO TMEP costs only $19.00. As a result, I would suggest purchasing a copy of the GPO TMEP just for the sheer convenience of having a separate access point.
I reviewed the following CD-ROM products for their respective coverage of Title 37 of CFR, the MPEP, the TMEP, and the Compendium:
1. Annotated 37 CFR (Counterpoint Publishing)
2. Full Authority (Matthew Bender)
3. Patent Assist (USPTO)
I would highly recommend the Annotated 37 CFR product of Counterpoint Publishing. This CD-ROM product provides a means of performing free text searches on the IP sections of the USCS; an annotated version of 37 CFR; the MPEP; the TMEP; and selected sections of the Federal Register over the last few years. What I liked most about this product was that it is highly linked (e.g. the MPEP contains links to other MPEP sections, USCS sections, and CFR rules). This linkage greatly eases the use of the MPEP since the MPEP is loaded with references to MPEP, CFR, and USC sections. Furthermore, this is the only source that I am aware of that provides an annotated CFR. This product is also relatively inexpensive at $500.00 per year and is updated quarterly.The one place this product could improve is that it could add the various graphics, forms, charts, tables, etc. that are contained in the MPEP. This is not just a problem with this CD-ROM product but with all electronic versions of the MPEP be they CD-ROM, Online, or Internet. I have yet to find an electronic version of the MPEP that includes the various graphic elements that exist in the print versions of the publication.
The Matthew Bender product utilizes the same search engine and interface as the Counterpoint Product. However, the main differences are that the CFR materials, the MPEP, and the TMEP are appendices of various different libraries of the product. As a result, there is not the same cohesive feel amongst the CFR, MPEP, and TMEP materials as there is in the Counterpoint product. Furthermore, the CFR in the Matthew Bender product is not annotated. Also, while I am not sure about the costs of this product, I believe the purchase of both the Horwitz - Patent Office Rules and Procedure Library (CFR and MPEP) and the Gilson - Trademark Protection and Practice Library (TMEP) would cost substantially more than $500.00 a year; this added cost may be warranted in order to have the text of these treatises at your disposal.
I found the Patent Assist product for the MPEP to be very non-user friendly. I felt very constrained while using the product. Also, the screen output was very unappealing to the eye. For example, it was difficult to determine where a quoted portion of a statute or rule ended and MPEP added text began. Due to the interface for this product, I would prefer to use a print version of the MPEP of this product.
Even though I was unable to use the Trademark Assist product for the TMEP, I would think that this product would suffer from the same short comings as the Patent Assist product.
It appears that as of yet no CD-ROM product contains the Compendium.
I reviewed both Lexis and Westlaw for their respective coverage of IP sections of the CFR, the MPEP, the TMEP, and the Compendium. Neither service had a copy of the Compendium online.From the CFR standpoint it appears that Lexis has a slight advantage over Westlaw. Both services provide a strong search engine for performing free text searches of the CFR. However, it appears that Lexis updates their database more frequently. For example, as of the time of this paper, the Lexis database was current as of April 4, 1997, whereas the Westlaw database was current as of January 1, 1997. This difference in currency, however, is only minor especially in light of the ease of updating a rule via the federal register under Westlaw. For example, a user need only type the command UPDATE in order to run the current rule through the Federal Register to determine whether the text of the rule has been changed.
The situation is clearly in favor of Lexis when it comes to the procedure manuals. Westlaw does not have the MPEP, the TMEP, or the Compendium available online. Lexis, on the other hand, does have a version of the MPEP and the TMEP online. The MPEP version, however, appeared to be several revisions behind.
I was unable to find any web site that contained or even mentioned the Compendium. I reviewed the following web sites for their respective coverage of IP sections of the CFR, the MPEP, and the TMEP:
1. KuesterLaw - http://www.kuesterlaw.com/
2. Legal Information Institute - http://www.law.cornell.edu/
3. Bitlaw - http://www.bitlaw.com/
4. USPTO - http://www.uspto.gov/
The KuesterLaw site contained patent related portions of the CFR as found in the September 1995 edition of the MPEP. The Bitlaw cite contained trademark related portions of the CFR as found in the May 1993 edition of the TMEP. Finally, the Legal Information Institute contained copyright related portions of the CFR, current as of February 12, 1994. None of these sites provides for a means of searching the regulations. Furthermore, as can be seen from the above dates the regulations at KuesterLaw, Bitlaw, and the Legal Information Institute are rather out-dated.It should be apparent that at the time of this paper there really was not a good site for obtaining the IP sections of the CFR. However, in the future The U.S. House of Representatives Internet Law Library - Code of Federal Regulations Page (http://law.house.gov/cfr.htm) may be a good site for obtaining these regulations. This site plans to place the whole CFR on the web in a searchable format. The site is about a fourth of the way there (Title 37 is not mounted yet) and appears to have a powerful search engine.
KuesterLaw and the USPTO contain the MPEP, 6th ed., rev. 1. The USPTO contains this information at an ftp site. Each chapter, and appendix of the MPEP is in a separate text file. As a result, some of these text files are quite large. For example, the text file which contains 37 CFR is over 1 megabyte. Due to this arrangement, the user essentially has to download each individual chapter in order to view it. Furthermore, there is no way to search the files beyond perhaps the web browser's limited search capabilities. What even makes this worse is that the text is completely unformatted and very difficult to read.
KuesterLaw apparently took this raw data from the USPTO, formatted it a bit, and inserted links in the table of contents to the relevant sections. As a result, KuesterLaw is a lot easier to use than the USPTO site. However, this version is still one version behind, lacks a free text search, is only slightly linked, and lacks all of the graphics of the print publication.
Bitlaw contains the May 1993 edition of the TMEP which happens to be the latest edition of the manual. This site did a good job of creating web pages for this publication. Bitlaw linked all references in the text to the relevant sections of the TMEP, USC, and CFR. However, the USC and CFR text is May 1993 text, and as a result rather out-dated. As a whole, I thought this site did a good job of placing this publication on the web. I just wished they would have added a search engine for the publication.
I think the best (most cost effective) route for the IP practitioner is to purchase the Title 37 CFR, the MPEP, the TMEP, and the Compendium in print form. Furthermore, I suggest purchasing the Counterpoint CD-ROM. The combination of these five products provides the best of all worlds. The Counterpoint CD-ROM adds annotations to the CFR, provides an annotated USC, quarterly updates and free text search capabilities, whereas the print publications provides an easy access point and any graphics which may be missing in the Counterpoint CD-ROM.
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