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

Recording of a 90-minute premium CLE webinar with Q&A

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Conducted on Tuesday, October 22, 2019

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Course Materials

This CLE course will examine revisions to the USPTO Manual of Patent Examining Procedure (MPEP). The panel will discuss patent eligibility, duty to disclose, and other updates to the MPEP. The panel will explore the impact on patent prosecution and beyond and provide best practices for applying the guidance or how to remedy instances where guidance is not followed, particularly in the area of duty to disclose.


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.



  1. Patent eligibility
  2. Duty to disclose
  3. Other amendments
  4. Best practices for applying the new guidance


The panel will review these and other vital issues:

  • How will examiners apply the revised MPEP?
  • How can patent counsel use the revised MPEP to bolster their arguments when patents are being examined? And how, if at all, can principles of the MPEP be used to bolster patents subject to AIA post-grant proceedings or litigation?
  • How does, if at all, the USPTO's disclosure standard differ from the courts' position?


Burgy, Adriana
Adriana L. Burgy

Finnegan Henderson Farabow Garrett & Dunner

Ms. Burgy focuses on opinion work, client counseling, patent prosecution and management, and litigation in the...  |  Read More

Irving, Thomas
Thomas L. Irving

Finnegan Henderson Farabow Garrett & Dunner

Mr. Irving has 35 years of experience in the field of IP law. His practice includes due diligence, patent prosecution,...  |  Read More

Johns, Christopher
Christopher C. Johns

Finnegan Henderson Farabow Garrett & Dunner

Mr. Johns maintains a diverse patent practice, including drafting and prosecuting patent applications related to...  |  Read More

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