On June 30, 2020, the USPTO incorporated revisions into the ninth edition of the Manual of Patent Examining Procedure (MPEP) to provide additional clarity and guidance on current patent examination policies and procedures. These revisions reflect changes in examination guidelines, specifically those related to determining subject matter eligibility and examining computer-implemented functional claim limitations. Sections of the MPEP where these revisions have been incorporated can be identified by searching for the indicator [R-10.2019] in the section headings and sub-headings.
Most of the revisions to the MPEP include updates to case law citations, cross-references, forms and section headings. The USPTO also corrected errors in grammar and incorporated gender-neutral wording. Additionally, the revisions provide a clearer understanding of current examination and filing policies, especially in uncommon prosecution scenarios. The following review identifies and discusses some of the significant revisions made to the MPEP chapters and how they may impact current patent prosecution practices.
This review is intended to highlight areas of interest and is not exhaustive. A complete list of all the sections of the MPEP that have been updated is available at https://www.uspto.gov/web/offices/pac/mpep/mpep-0005-change-summary.html.
Chapters with Significant Changes
Chapter 500: Signature requirements have been updated to reflect electronic filing.
- MPEP §502.02 now allows a graphic representation of a handwritten signature to be created by using a stylus pen and/or touch-pad. All correspondence, except for a notice of appeal pursuant to 37 CFR 41.31, filed in the Office must include a signature.
- MPEP §502.05 has been revised to include guidelines on the updated patent electronic system.
- MPEP §509.01 now recites that authorized users for a deposit account must be listed in Financial Manager as authorized fee payers and where the fee payer’s last name in a signed fee authorization document does not match any of the authorized fee payers for the deposit account which is being relied upon to pay a fee, the fee payment may be delayed or rejected.
Chapter 600: This chapter has now been revised to clarify how the Office will handle documents.
- MPEP 601.01(a)(III) states that a copy of a specification and drawings for an application incorporated by reference needs to include the claims of the incorporated application as well.
- MPEP 601.05(a) clarifies that although a corrected ADS sheet can be submitted up to the payment of the issue fee, submitting a corrected ADS is not a matter of right when the application has entered Final Rejection or Allowance. Additionally, this section has been updated to provide guidance in identifying a new applicant on the ADS. MPEP 609.03 now dictates that when examining a PCT national stage application, the examiner will consider all U.S. patents, U.S. patent application publications, and U.S. pending applications cited in the international search report that are stored electronically in the USPTO’s Image File Wrapper (IFW) system. There is no requirement for applicant to provide a separate listing of references.
- MPEP 609.04(b)(IV) includes the Quick Path Information Disclosure Statement (QPIDS) Pilot Program. This pilot program allows, under specific circumstances, for the submission of an IDS after payment of the issue fee but prior to patent grant. The IDS is submitted with a conditional RCE that is only granted if the examiner decides that one or more of the newly cited references require further consideration.
Chapter 1200: The USPTO has clarified payment and timing of appeals.
- MPEP 1204 clarifies that appeal fees cannot be paid using a general authorization to a deposit account under 37 CFR 1.25(b), which only authorizes payment of fees under 37 CFR 1.16 through 1.18.
- MPEP 1204.02 now indicates that pre-appeal briefs that have been filed which are found to be not compliant with the USPTO guidelines cannot be corrected and resubmitted since it would no longer be filed on the same day as the notice of appeal.
- MPEP 1210 has been updated to include the filing of a RCE as a route to avoid the rendering of a decision by the Board during appeal proceedings.
- MPEP 1214.03 now includes a section stating that if a timely request for rehearing of the Board’s decision is filed, the time for filing a notice of appeal to the CAFC or for commencing a civil action expires 63 days after a decision on a request for rehearing or reconsideration.
Chapter 2100: A majority of the revisions to this chapter involve the additions of new sections containing material that was previously recited in chapter 700.
- MPEP 2106 has been updated to incorporate guidance from 2019 Revised Patent Subject Matter Eligibility Guidance, 84 FR 50 (January 7, 2019) and October 2019 Patent Eligibility Guidance Update, 84 FR 55942 (October 18, 2019). These guidelines discuss the revised procedures that USPTO personnel follow to determine whether a claim is directed to a judicial exception (laws of nature, natural phenomena, and abstract ideas). Specifically, these guidelines clarify that a claim which recites a judicial exception is not “directed to” the judicial exception if said exception is integrated into a practical application. On the contrary, if the judicial exception is not integrated into a practical application, then the claim must be further evaluated for “an inventive concept” to determine whether the subject matter of the claim satisfies 35 U.S.C. 101. A more detailed explanation into evaluating whether a claim recites a judicial exception, the groupings of abstract ideas, evaluating whether a judicial exception is integrated into a practical application, the role of evidence with respect to eligibility rejections and how these guidelines are applied in patent examining corporations can be found within the October Guidance Update.
- MPEP 2128(I) now offers guidelines for applicants or patent owners for challenging to public availability of a cited document. Specifically, those wishing to challenge the public availability of a document should submit an affidavit or declaration under 37 CFR 1.132 that includes facts and evidence to support the challenger’s position.
- MPEP 2128 now contains a new section under 2128(II) that discusses how social media can serve as a potential prior art reference.
Chapters with Less Significant Changes
Chapters 100-200: Revisions to these chapters mostly comprises updating cross-references, PTO forms and terminology.
- MPEP §140 contains a new subsection pertaining to guidelines on how to address improperly filing an application in a foreign office without a foreign filing license (subsection III, previously MPEP §706.03(s)).
Chapter 300: Most of the revisions in this chapter aim to provide more clarity related to assignments.
- MPEP §301 clarifies that the original applicant is presumed to be the owner of the application.
- MPEP §302 clarifies that when an Applicant wishes to designate a domestic representative, they need to submit a designation that has been signed, and which is separate from the assignment, to the USPTO for the designation to be recorded.
- MPEP §317 has been revised to emphasize that if an assignment is not timely recorded at the USPTO, the unrecorded assignment will not be superior to the rights acquired by a third party for valuable consideration if that third party did not have knowledge of the unrecorded assignment.
Chapter 400: Just as in chapters 100-200, revisions to this chapter relate mostly to updating cross references and forms for granting a power of attorney.
- MPEP §403.02 now clarifies that in scenarios where two patent practitioners are granted a power of attorney for an application, if a later-filed power of attorney only lists the second practitioner, the later-filed power of attorney serves as a revocation of the earlier-filed power of attorney, even without an express revocation of the power of the first patent practitioner.
Chapter 700: A majority of the revisions to this chapter include updating cross-references, relocating certain sections to MPEP chapter 2100 and correcting minor clerical errors.
- MPEP 707.05(e)(IV) now allows that when citing an internet reference, one can take a screenshot of the electronic document if there is no download option and file said screenshot to the USPTO as long as it is accompanied by explanation of the material captured.
Chapter 800: As in chapter 700, most of the revisions to this chapter included updating cross-references, adding case law rulings for additional guidance and correcting minor clerical errors; however, there are some more practical updates.
- MPEP 804.01 now clarifies that a patentee cannot retroactively recover the safe harbor protection of 35 U.S.C. 121 against nonstatutory double patenting by amending a patent that issued from a continuation-in-part application to only subject matter in the parent application and then re-designating the CIP as a divisional of the parent application.
- MPEP 804.05 clarifies that nonstatutory double patenting does not invalidate any patent term extension (PTE) granted under 35 U.S.C. 156 if the claims are otherwise valid under its pre-PTE expiration date.
Chapter 1400: Updates to chapter 1400 comprises revisions pertaining to reissue applications.
- MPEP 1410 now states that reissue applications containing sequence listing must comply with the sequence rules in 37 CFR 1.821-1.825 upon filing.
- MPEP 1415.01(I) has been revised to the maintenance fee updates forth in Setting and Adjusting Patent Fees During Fiscal Year 2017, 82 FR 52780.
- MPEP 1451(I) now contains a new paragraph stating that whenever a divisional reissue application is filed with a copy of the assignee consent and a copy of the oath/declaration from the parent reissue application, both documents may be accepted by the OPAP and the divisional reissue application accorded a filing date so long as all other filing requirements are met.
- MPEP 1490 (VI) now recites that any terminal disclaimer submitted after the date of payment of the issue fee but prior to patent grant date requires the filing of a certificate of correction requesting that the face of the patent be amended to state that the patent is subject to a terminal disclaimer.
Chapter 1800: The next chapter to receive significant updates is chapter 1800.
- MPEP 1805 provides situations where applications can be filed with, or forwarded to, the International Bureau without a foreign filing license.
- MPEP 1840 includes references to the Official Gazettes where the USPTO has made an arrangements with the European, Korean, Australian, Russian Federation, Israel, Japan and Singapore Patent Offices to act as International Searching Authorities.
- MPEP 1893 has been updated to include international design applications filed under the Hague Agreement as a type of application considered to be a U.S. national application.
Chapter 1900: Many of the revisions to this chapter aim to clarify when a protest can be filed.
- MPEP 1901 now clarifies that protest cannot be filed for provisional applications and a timely filed protest will be entered if it complies with 37 CFR 1.291(c) and is accompanied by the statement under 37 CFR 1.290(b)(2) or complies with 37 CFR 1.291(c)(5).
- MPEP 1901.01 now states that a statement must be submitted with the first protest filed by the real party of interest.
- MPEP 1901.04 revisions further clarify that publications of PCT and international design applications under the Hague Agreement do not trigger the end of the time period set in 37 CFR 1.291(b) for submitting a protest in a national stage application.
Chapter 2200: Many of the revisions incorporated into chapter 2200 relate to updating specific sections to reflect the amendment made to 37 CFR 1.20(c) by the Final Fee Rule.
- MPEP 2215 has been reorganized into separate sections to better clarify when which filing fee is appropriate, the circumstances for failing to pay the filing fee in its entirety and circumstances when the paid filing fee may be refunded.
- MPEP 2259 clarifies that when claims are finally held as "not invalid" by a federal court, even after appeals, those claims may still be subject to reexamination because res judicata, based on a court holding in an infringement proceeding, is not applicable in reexamination proceedings sine the Office was not a party to the litigation.
Chapter 2400: Key revisions to chapter 2400 involve updating the seed deposit requirements to be in accordance with the Changes to Requirements for Seed Deposits at American Type Culture Collection and Advanced Notice of Change to Manual of Patent Examining Procedure. Specifically, the USPTO will accept a minimum deposit of 625 seeds as being compliant with the rules under 37 CFR 1.801 through 1.809. Additionally, chapter 2400 has been updated to clarify that sequence listing submissions are subject to the fee set forth in 37 CFR 1.21(o) and that sequence listings, being in ASCII text format, need to be submitted on either separate sheets of paper or compact discs.
Chapter 2700: The last chapter to receive substantial revisions in chapter 2700.
- MPEP 2732 and 2734 have been updated to include new sections on requesting patent term adjustment in situations where safe harbor has come into effect.
- MPEP 2755.01 contains a new paragraph covering circumstances where extensions of multiple patents may be sought based on a single regulatory review period as per 37 CFR 1.785. In these circumstances, where those patents would expire on the same day, multiple interim extensions under 35 U.S.C. 156(e)(2) would be permitted by the Office. Additional guidance pertaining to requesting patent term extensions for multiple patents can also be found within MPEP 2761.