Patent Eligibility, Duty to Disclose and More: USPTO Manual of Patent Examining Procedure Guidance

Description

The MPEP is a prosecution tool that can be a wealth of information to effectively and efficiently prosecute applications. Prosecutors should understand the most recent revisions to the MPEP and their impact to further those goals of effective and efficient prosecution. Prosecutors should also keep in mind that if the issued patent is dragged into an AIA post-grant proceeding, such as IPR or PGR, PTAB will probably not be interested in the MPEP, but will be interested in cases relied on therein.

The revised MPEP provides guidance based on recent decisions on patent eligibility, incorporating its memos explaining its implementation of the Section 101 framework. The included guidance does not change the current examination practice but, in addition to the USPTO guidance memos not yet incorporated into the MPEP, may provide helpful reminders to practitioners of how best to frame and argue rejections under Section 101. And, of course, the prosecutor needs to be aware of how judicial authority treats 101 differently from the way the PTO sees it.

The latest revision to the MPEP also updates the section on the duty of disclosure. When a patent is the subject of an infringement action or a post-grant proceeding under AIA, examiners must be made aware of such litigation and any material arising from it. The MPEP notes such proceedings may "yield information that may be considered material to pending related patent applications," such as prior art or evidence related to inventorship. And what recourse does the prosecutor or patentee have if the guidance of the MPEP relative to duty of disclosure is not followed during prosecution? Pending children applications? Supplemental examination?

Listen as our authoritative panel of patent attorneys discusses and examines the changes in the newly revised MPEP and what they mean for patent prosecution. The panel will discuss patent eligibility and duty of disclosure, as well as other amendments to the MPEP. The panel will offer best practices for applying the guidance.