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

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

Conducted on Thursday, April 26, 2018

Recorded event now available

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Program Materials

This CLE webinar will examine the latest revisions to the USPTO Manual of Patent Examining Procedure (MPEP). The panel will discuss patent eligibility, duty to disclose, and other changes to the MPEP. The panel will explore the impact on patent prosecution and provide best practices for applying the new guidance.


While revisions to the MPEP are not uncommon, the most recent revision that occurred on Jan. 30, 2018, includes changes and additions to sections of the MPEP that may be helpful in addressing currently debated topics in patent law. For example, the revised MPEP includes guidance based on recent decisions on patent eligibility, incorporating its memos explaining its implementation of the § 101 framework. The included guidance does not change the current examination practice but may provide helpful reminders to practitioners of how best to frame and argue rejections under § 101.

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.

The MPEP is a prosecution tool that can be a wealth of information to effectively and efficiently prosecute applications. Prosecutors should understand the changes and additions to the MPEP and their impact to further those goals of effective and efficient prosecution.

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 new guidance.



  1. Patent eligibility
  2. Duty to disclose
  3. Other amendments
  4. Best practices for applying 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?
  • How does the USPTO’s disclosure standard differ from the courts’ position?


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

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

Mulcahy, John
John M. Mulcahy

Finnegan Henderson Farabow Garrett & Dunner

Mr. Mulcahy focuses on patent litigation before both the ITC and federal district courts. His litigation experience...  |  Read More

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