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 prosecute applications effectively and efficiently. Prosecutors should understand the most current version of 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 guidance based on recent decisions on patent eligibility, incorporating memos explaining implementation of the Section 101 framework, continues to be the best reference for practitioners in the absence of Supreme Court guidance or legislative reform. The included guidance provides helpful reminders to practitioners of how best to frame and argue rejections under Section 101.

But of course, the prosecutor also needs to be aware of how judicial authority treats 101 differently from the way the PTO sees it. The panel will review the most recent 101 case law relating to biotech and computer software subject matter, including the Supreme Court’s recent denial of certiorari in Am. Axle & Mfg. v. Neapco Holdings L.L.C., 2022 U.S. LEXIS 3240 (U.S., June 30, 2022). 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 MPEP and what it means 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.