I'm new to the world of law and trying to get a high level picture of things. Am I right to think of the structure of information (at least in the patent realm) as:

  1. USC title 35 = high level source, compilation of laws
  2. MPEP = detailed guidance on interpretation of the USC title 35
  3. Guidance docs and cases = further colour on the interpretation of law along with Interim updates to the MPEP, until the MPEP is updated.

Do all titles of the USC have an associated manual along with supporting guidance documents? How often does the manual get updated?

Delving a little deeper: I understand that the manual of patent examining procedure serves to provide guidance for use by USPTO professionals in applying the laws set forth in USC 35.

I don't see mention of the judicial exceptions (abstract ideas/laws of nature/natural phenomena) in the USC. Is the MPEP along with guidance documents such as these/relevant cases the only place to find information on them?

  • I'm voting to close this question as off-topic because it belongs on patents.stackexchange.com Jan 25, 2018 at 18:49
  • cool - ill post it there too. didn't realist there was a patents forum specifically. This is relevant to the wider law community though because I want to know if every title of the USC has a manual comparable to the MPEP.
    Jan 25, 2018 at 18:51
  • 1
    @DVCITIS Most titles of the USC have nothing comparable to the MPEP. It is updated when the PTO gets around to it (i.e. irregularly).
    – ohwilleke
    Jan 25, 2018 at 20:57
  • 2
    For the convenience of readers, the accepted answer in the patent forum is at patents.stackexchange.com/questions/19049/… It is consistent with the answer below, with more "flesh" in some places but a less comprehensive list of authorities.
    – ohwilleke
    Jan 25, 2018 at 21:25

1 Answer 1


Other Authorities

You are missing at least several important sources of authority, which include:

(1) The United States Constitution;

(2) the set of regulations issued by the U.S. Patent and Trademark Office and codified in the Code of Federal Regulations at Title 37, Chapter I;

(3) applicable international treaties;

(4) case law with the most important being the U.S. Supreme Court, followed by the U.S. Court of Appeals for the Federal Circuit, followed by U.S. District Court cases on point; and

(5) case law from the administrative bodies of the PTO.

All of the above and the sources you mention are "primary sources".

These are interpreted collectively in "Treatises" on patent law which are often cited on issues where primary authority is either too thin, or so numerous that it is not easily summarized merely by resort to primary authority. A number of them are listed here.

Chisum on Patents is the leading treatise in the field and should usually be your first destination. It will mention most of the relevant primary source authority in the subject area you are researching.

Priority of Authorities

The CFR is superior to the MPEP but inferior to Title 35.

Treaties are co-equal with Title 35 with conflicts resolved by the date of enactment.

Case law of the U.S. Supreme Court trumps everything (even, in practice, the language of the United States Constitution).

Case law from the U.S. Court of Appeals from the Federal Circuit trumps everything except the U.S. Supreme Court. Given the very long string of recent reversals of the U.S. Court of Appeals for the Federal Circuit by the U.S. Supreme Court (almost one or two a year for the last decade or so), however, every Federal Circuit case should be analyzed to determine if it has been implicitly overturned or limited by the applicable U.S. Supreme Court jurisprudence.

The United States Constitution trumps everything except U.S. Supreme Court cases and cases from the U.S. Court of Appeals for the Federal Circuit (these cases impliedly provide definitive interpretations of the United States Constitution).

Case law from a U.S. District Court is not binding on anyone but the parties to the case, but is highly persuasive and in practice is about on a par with the MPEP, but subordinate to the CFR and administrative case law of PTO bodies.

One complicated aspect of case law is that it is only binding when it resolves a question of law necessary to resolve to decide the case before it. Sometimes opinions go off on tangents which discuss other questions of law not before the court and that is called "dicta" which is persuasive on that point of law, but not binding and not as authoritative. It is not always obvious what constitutes the binding portion of a court decision and what constitutes dicta.

Another complexity in case law involves concurring or dissenting opinions in cases. Dissenting opinions, obviously, are not binding on anyone but sometimes clarify the scope of the majority opinion. If there is a plurality opinion and a concurring opinion in a case, they have equal weight and neither opinion's rule is definitive except to the extent that they agree. Generally speaking a majority opinion will be binding relative to a concurring opinion in the same case, but that status isn't really definitive and a concurring opinion should be considered even when it accompanies a majority opinion even though the concurring opinion shouldn't be considered binding in that situation.

Of course, all case law (and for that matter all other authority) can be made obsolete by subsequent amendments to Title 35 or by the adoption of new treaties.

A treatise isn't binding on anyone, but a well reasoned passage from a leading treatise like Chisum will, in practice, be given weight a little below a U.S. Court for the Federal Circuit case, but often greater than any lesser source of authority on a topic. A well reasoned passage in a lesser treatise is typically given a weight comparable to a U.S. District Court case that is on point.

Loose Ends

One of the important sources for prior art is the compendium of all patents ever issued by the United States (the vast majority of which have expired and entered the public domain). You can get them all for a very reasonable cost in electronic form. The compendium of patents which have not expired is obviously relevant when attempting to determine if a potential patent or technique or process of a client infringes on any existing patent.

There are also some patent issues (e.g. jurisdiction and venue in patent disputes) which depend upon other Titles of the United States Code and have the same priority as Title 35 of the United States Code.

There are circumstances in which the procedural rules of various courts which issue relevant case law are relevant. Each type of court has its own rules of procedure, and each particular court has its own local rules. (This is not hypothetical, I've had a case involving patent law in which three-quarters of the motion practice in the heavily litigated case depended upon the local rules of practice in the U.S. Court of Appeals for the Federal Circuit.)

Precedents of U.S. Bankruptcy Courts, and precedents from U.S. Court of Appeal for Circuits other than the Federal Circuit, are sometimes relevant as well (e.g. interpreting procedural court rules, rules of evidence, or very general principles of law that aren't restricted to patent law such as the ex post facto clause of the U.S. Constitution). But, for the most part, patent case law arises in U.S. District Courts, the U.S. Court of Appeals for the Federal Circuit, the U.S. Supreme Court and the administrative tribunals of the PTO.

Issues related to the relationship between an attorney and a client in patent law cases (e.g. attorney malpractice law in patent cases) is a question of state law rather than federal law.


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