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In Memory of
Robert Podwil
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Marilyn A. Amento, President and Freelance Paralegal, I.P. Paralegal Services®, Inc.
October 20, 1998 (Updated February 28, 2001)
It has been said, "Information is power". This is true. But Gertrude Stein
said, "Everybody gets so much information all day long that they lose their
common sense." This is also true. However, Samuel Johnson said it best: "
The next best thing to knowing something is knowing where to find it." The
late Philadelphia Intellectual Property lawyer, Robert C.
Podwil, seemed to follow Johnson's thinking. Bob taught that regardless of how
skilled or knowledgeable one is in
intellectual property law, patent and trademark rules should not be memorize.
There are so many rules that change so often, it is always best to go back to
the source and double-check the rules and laws.
This article is intended to assist intellectual property law professionals find
some very important I.P. resources. We cannot possibly profess to know everything.
Having been in the patent, trademark and copyright field since 1988, I still learn
more everyday. I learn by researching, by struggling and doing, by participating
in listserves, by finding news sources and I learn through my involvement in
professional activities. Hopefully others learn from what I have to offer.
Following are some "must-have" intellectual property references pertaining
to U.S. practice. These references may be viewed or downloaded from the worldwide
web. Those of you on networks in corporate or law firm environments may wish to
dedicate a separate drive and download the files discussed below. Have these
resources available in "read only" format. Alternatively, individuals
may also want to have these references on their hard drive in case of network
failure. I have a separate, removable, hard drive set aside to segregate these
references. By downloading the files to a hard drive, one is not at the mercy
of the slowness of the Internet or the crashing of a network.
I always have these four manuals available on my hard drive for searching at
any time: The Manual of Patent Examining Procedure; The Trademark Manual of
Examining Procedure; The Trademark Trial and Appeal Board Manual of Procedure;
and the Trademark Acceptable Identification of Goods and Services. They are
very bulky to have in print format. On the other hand, I purchased a print
copy of 37 CFR, which is always within arm's reach. These resources are
essential when preparing applications, responding to Office Actions, mailing
documents and dealing with any matter involving the U.S. Patent and Trademark
Office (PTO). They are step-by-step how-to manuals used by Examiners and other
personnel at the PTO.
- MPEP, Seventh edition, Revision 1 (revised February 2000), can be
downloaded or viewed
either one chapter at a time or in its entirety in either PDF format
(24.1MB file) or in ASCII text (2MB Zip file) format from www.uspto.gov/web/offices/pac/mpep/index.html.
This is a voluminous publication to print, so if you prefer a hard copy
of the MPEP,
please note that PTO does not handle the sale of the MPEP.
Contact
the Superintendent of Documents (202)
512-1800.
- TMEP, Second Edition, Revision 1.1 (revised August 1997) can be
downloaded or viewed chapter-by-chapter at
www.uspto.gov/web/offices/tac/tmep/index.html
- TBMP, First Edition (revised September 1995) can be viewed chapter
by chapter at ftp.uspto.gov/pub/tbmp. The entire TBMP can be downloaded
as a zip file in either PDF
(2.06 MB file) or ASCII text (451 KB file) formats.
- The Trademark Acceptable Identification of Goods and Services
Manual (last
modified May 13, 1999) can be searched or viewed at www.uspto.gov/web/offices/tac/doc/gsmanual/index.html. Download
it at
www.uspto.gov/go/tac/doc/gsmanual/manual.html. This manual
advises of
the proper international classification of trademark goods and
services
from "abacuses" in Class 9 to "wireless
voice mail services" in Class 38.
- 37 CFR (Patents, Trademarks and Copyrights) (Revised July 1, 2000), may
be searched at the National Archives and Record Administration web site at http://www.access.gpo.gov/cgi-bin/cfrassemble.cgi?title=200037.
- 21 CFR (Food and Drugs) (Revised April 2, 2000), for those involved in
pharmaceutical patents, may be searched at www.access.gpo.gov/cgi-bin/cfrassemble.cgi?title=200021
In spite of all these manuals, even the most seasoned intellectual property
professionals, lawyers and paralegals alike, need to seek the advice of other
professionals in the field. To bounce ideas off of each other or to ask
questions concerning complicated or unfamiliar matters, members of
Internet listserves post a message to the group of listserve members.
Often, someone may share with listserve members new changes in law or
various happenings in the I.P. community, and the like. Following are
some patent and trademark listserves where you can stay up-to-date on
current happenings in the worldwide I.P. community or seek advise from peers.
- IPLAW@paralegals.org is an NFPA sponsored listserve for members
interested in Intellectual Property Law. Sign up for all NFPA listserves at www.paralegals.org/Forums/listsubscribe.html. Several
members share information such as which countries joined the PCT,
request information about other members' experiences with certain
practices in foreign countries. Listserve members help other listserve
members in obtaining information.
- COMPUTER-LAW@socs.uts.edu.au, sponsored by the School of Computing
Sciences of the University of Technology in Sydney, Australia, is
a listserve focusing on Intellectual Property and Computer Law. To subscribe, send e-mail to
majordomo@socs.uts.edu.au with the following message: subscribe
computer-law. See also related web site at www.gu.edu.au/gint/ozlists/law.html.
- intprop-l@topica.com is a
listserve geared toward European Intellectual Property Law.
Discussions
referring to U.S. law should not be posted to this list. To
subscribe to the
INTPROP-L list, send a message to intprop-l-subscribe@topica.com.
- DOMAIN-POLICY@lists.netsol.com
is a Domain Name Policy Listserve for issues related to
Domain Name
Policies. Subscribe at http://lists.netsol.com/cgi-bin/wa?SUBED1=domain-policy&A=1
- INTA Discussion List - TMTopics: The
INTA mailing list (formerly known as intanet-l) was created in
1996 and exists
for the purpose of exchanging information and promoting discussion
primarily
about trademarks. Discussion about all aspects of trademark law is
encouraged.
Membership in INTA is not
required to
subscribe to the list. This moderated list is free and open to all.
Send a message to
tmtopics-request@lists.inta.org With
the word Subscribe in the body of the e-mail. (See http://www.inta.org/tools/listserver.shtml).
- Discover additional legal listserves using keyword searches at http://www.lib.uchicago.edu/~llou/lawlists/lawlists.txt.
Intellectual Property Paralegals, as professionals need not rely only on
I.P. lawyers for information on what's happening in the I.P. world. There
are many resources to which
paralegals may avail themselves with little effort. Many I.P. firms
throughout the
world publish their own newsletters reporting on and discussing changes
in I.P. law.
Paralegals in law firms and corporate law departments can request to be
placed on
the mailing list of foreign
(i.e. non-US) I.P. firms and receive their newsletters. The "magic"
of
e-mail and the internet can accomplish this in little time with no mailing
expense. Be prepared!
Most agents read and respond to such inquiries. When I receive such
newsletters
and forms from these associates they are retained in files and alphabetized by
country and agent, for later reference. However, if you go to the web site of
any reputable I.P. firm, you are sure to find similar newsletters. Here are
just a few on-line newsletters and news sources.
- Subscribers to Saegis of Thomson & Thomson are privy to a vast
wellspring of news sources including newsletters, recent
caselaw, treaties, government links, etc. Remember, Saegis subscriptions
are free. At the "Library" link Saegis publishes:
Legal News, provides Educational Materials (including laws, treaties, patents,
copyrights and trademarks), and Organizations and Directories. A constant
reference of mine is T&T's International Guide to Trademarks.
- Internet Patent News Service (PATNEWS) is an almost daily e-mail
newsletter with colorful commentary by Greg Aharonian concerning intellectual
property topics.
To subscribe send the message "NEWS" to
sctran@world.std.com.
Also, if you don't mind, Greg asks that you PLEASE include some
information on
what you do and how you might use this patent information, along
with your
name and address. (See http://www.bustpatents.com/ipns.htm).
- law.com/pa (30 day free trial) at http://www1.law.com/pa/register/
is a unique legal resource devoted to Pennsylvania law. Other states
may have similar resources.
One may also access the Practice Centers such as Intellectual
Property Law where "you get coverage of breaking legal news,
the latest case law, and practical information and incisive legal analysis on
cutting-edge IP law issues, including patents, trademarks, copyrights,
trade
secrets, and unfair competition, plus coverage of biotechnology, media
and
entertainment law issues."
- "Westlaw Topical Highlights" on Saegis covers
Intellectual Property case law in relation to: Art and Architecture,
Computers and Online Services, Consumer Goods, Damages, Entertainment,
Injunction, Marks and Logos, Patents and Patent Practice, Telecommunications,
Trademark and Trademark Practice. Some recent titles include:
- "Serious challenge to validity of patent precluded
preliminary injunction."
- "Patent for double-walled aluminum softball bat was not
infringed."
- "Legislative extension of copyright terms did not violate
First Amendment or Copyright Clause."
- "Trademark "The Drifters" was fraudulently
procured. "
- "Initial application satisfied the best mode requirement."
- On-line news sources such as ZD Network News (www.zdnet.com/zdnn/)
and Law Journal Extra! (http://www.ljx.com/practice/intellectualproperty/index.html)
cover topics such as Patent, Trademark and Copyright Law, Internet Law,
Computer Law, IP Antitrust, IP International, IP Arbitration, IP Lawyers,
Legal Memos, Trade Secrets and Job Listings.
There are many intellectual property organizations that provide a wealth of
information and opportunities. Membership in these associations supports
professional growth through attendance at annual meetings, educational seminars
(including CLE), networking opportunities, receipt of publications and
articles. Here are some organizations from which an I.P. specialist can learn a great deal.
- INTA (the International Trademark Association at www.inta.org) offers
associate membership to lawyers and non-lawyers. Thus, paralegals qualify
for individual membership in INTA
. If a firm or corporation belongs to INTA, employees are also eligible
for
membership and may actively participate in such activities as Committees.
INTA sponsors very informative Roundtable Discussions on hot topics at
numerous cities around the U.S. Discussion outlines, suggested
readings and case law provided by INTA place the topics in relevant
context and provide excellent background. I suggest that you go to INTA's
site and check out
http://www.inta.org/meetings/index.shtml.
- AIPLA (the American Intellectual Property Law Association at http://www.aipla.org/)
does not permit paralegal membership. Hopefully, AIPLA will follow the lead of other organizations and notice the advantages of opening membership to paralegals. AIPLA does
offer, however,
excellent Intellectual Property seminars for Legal Secretaries and Paralegals.
In addition, their web site is full of detailed information on current legislation,
Alternative Dispute Resolution and more.
- ABA (the American Bar Association at www.abanet.org/), as do most Bar
Associations,
has a category for paralegal membership. Legal Assistant Associates (www.abanet.org/members/info/def.html#legal) are defined as: "Persons
qualified through education, training or work experience who are retained by
a lawyer, law office, government agency or other entity to perform specifically
delegated legal work which requires sufficient knowledge of legal concepts and
which otherwise would be performed by an attorney in absence of a legal
assistant." The ABA also has a Section of Intellectual Property Law,
which claims to be "the largest intellectual property organization
in the United States." (See www.abanet.org/intelprop/).
- Other Associations that encourage the exchange of information and are good sources of all types of legal
information are AALLA (the American Association of Law Libraries at www.aallnet.org/),
SLA (Special Librarian's
Association at www.sla.org/, GPLLA (Greater Philadelphia Law Librarians Association) at www.gplla.org).
Last, but certainly not least, the National Federation of Paralegal Associations provides
many opportunities to learn about new developments in Intellectual Property. In addition
to sponsoring 17 paralegal listserves including the IP Law listserve discussed above,
NFPA has affiliates, such as the
Philadelphia Association of Paralegals (PAP)
and the Montgomery
County Paralegal Association who are responsible for providing professional growth
opportunities at the local level.
- On the first of each month, the Intellectual Property Law section of PAP
sponsors a Brown-Bag lunch where the host firm, usually
Woodcock Washburn Kurtz Mackiewicz &
Norris, provides complementary
beverages and cookies. These monthly lunches feature speakers, either lawyers
or paralegals, on interesting subject matter such as
18 Month Patent Publication, Intellectual Property Internet Resources,
Electronic Filing of Patent and Trademark Applications. These lunches allow members to interact with each other and share ideas.
- PAP also sponsors an Annual Education Conference, which is generally held in
October. The conference offers a
luncheon with a keynote speaker and a variety of educational seminars in legal
specialty areas including Intellectual Property Law.
This article presented you with a just a few of the many thousands of Intellectual Property resources available to us as professional paralegals. However, remember that too much information can almost mean no information. Carefully pick and choose the listserves in which you want to participate, the associations in which you want to become active and the newsletters to which you wish to subscribe. I myself am aware of all of the above resources but participate in a select few.
© 1998
- 2003
, I.P. Paralegal Services®,
Inc. All rights reserved.
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