MPEP Update: What Practitioners Need to Know

Although it does not have the force of rule or law, the Manual of Patent Examining Procedure (“M.P.E.P.”) is the guiding document for patent examiners. As such, it is a fundamental tool for patent prosecutors trying to guide patent applications through the prosecution process to issuance. Not only does it shed light on the USPTO’s approach and policy towards patentability topics, it also can provide a persuasive foundation for your patentability arguments. 

On March 3, 2023, the USPTO announced revisions to the following chapters:

• 100, Secrecy, Access, National Security, and Foreign Filing
• 200, Types and Status of Application; Benefit and Priority Claims
• 400-1500, Representative of Applicant or Owner; Receipt and Handling of Mail and Papers; Parts, Form, and Content of Application; Examination of Applicants; Restriction in Applications Filed under 35 U.S.C. § 111, Double Patenting; Prior Art, Classification, and Search; Matters Decoded by Various U.S. Patent and Trademark Office Officials; Statutory Invention Registration (SIR); Pre-Grant Publication and Preissuance Submissions; Appeal; Allowance and Issue; Correction of Patents; Design Patents
• 1700, Miscellaneous
• 1800, Patent Cooperation Treaty
• 2000, Duty of Disclosure
• 2100, Patentability
• 2200, Citation of Prior Art and Ex Parte Reexamination of Patents
• 2400, Biotechnology
• 2500, Maintenance Fees
• 2700-2900, Patent Terms and Extensions; Supplemental Examination; International Design Applications

88 Fed. Reg. 13,437 (Mar. 3, 2023), https://mpep.uspto.gov/RDMS/MPEP/current

In addition, there are updates to Chapter FPC - Form Paragraphs Consolidated, the Foreword, the Introduction, the Subject Matter Index, and Appendices II, L, R, AI, and T. A change summary is provided at https://mpep.uspto.gov/RDMS/MPEP/current#/current/MPEP-ChangePage.html

Those changes potentially impacting everyday practice include, for example:

• Clarifying the potential need to change inventorship after a restriction requirement (Ch. 200);
• Clarifying some requirements for claiming small or micro entity status (Ch. 500);
• Clarifying IDS practice (Ch. 600);
• Clarifying RCE, amendment, and affidavit/declaration practices (Ch. 700);
• Updating guidance for double patenting rejections (Ch. 800);
• Clarifying appeal practice (Ch. 1200);
• Incorporating revisions from Duties of Disclosure and Reasonable Inquiry During Examination, Reexamination, and Reissue, and for Proceedings Before the Patent Trial and Appeal Board, 87 Fed. Reg. 45,764 (July 29, 2022) and Properly Presenting Prophetic and Working Examples in a Patent Application, 86 Fed. Reg. 35,074 (July 1, 2021) (Ch. 2000);
• Updating many provisions relating to patentability (Ch. 2100); and
• Updating patent term adjustment provisions (Ch. 2700).   

Note, M.P.E.P. sections have a revision indicator, e.g., R-07.2022, for the most current revision. Meaning those sections were revised to reflect USPTO patent practice and relevant case law as of July 31, 2022. Even though the M.P.E.P. revisions were not publicized until March 3, 2023, the effective date of the changes is, according to the USPTO, July 31, 2022. Practitioners need to not only consistently check that they understand the latest USPTO approach and policy with the most recent version of the M.P.E.P., but also ensure that they are using the current version of the M.P.E.P.