USPTO Publishes Revised Ninth Edition of the MPEPJuly 9, 2020

In June, the United States Patent and Trademark Office (USPTO) published the newest revisions to the Ninth Edition of the Manuel of Patent Examination Procedure (MPEP). The revisions update the MPEP to include all the changes that became effective as of October 2019. This revision updates every section of the MPEP, except for Chapters 1100 (invention registration and publication) and 1600 (plant patents).

In addition to a number of typo and internal consistency corrections, the MPEP adds additional guidance in many areas. Notably, this includes revisions to Chapter 2100 to finally incorporate the October 2019 Patent Eligibility Guidance UpdateExamining Computer-Implemented Functional Claim Limitations for Compliance with 35 U.S.C. 112, and the 2019 Revised Patent Subject Matter Eligibility Guidance. This will allow direct reference to the MPEP instead of the various guidance put out by the USPTO last year, making it more relevant to Examiner’s during prosecution. The USPTO has also moved large sections of Chapter 700 into Chapter 2100 in an attempt to consolidate all the issues surrounding subject matter under a single chapter.

Another change is to Chapter 800. The MPEP adds the line, “Replies with an omission should be treated as provided in MPEP § 714.3,” in MPEP 804(I)(B)(1), which covers provisional non-statutory double patenting. This seems to indicate the USPTO’s increasing insistence to either file a terminal disclaimer or to address the rejection instead of holding it in abeyance until the claims are in allowable form to determine if a terminal disclaimer is actually needed because this allows the Examiner to treat an Amendment as not fully responsive .

By allowing the Examiner to treat an Amendment as not fully responsive, it is their discretion to accept the Amendment; to refuse the Amendment until it is fully responsive within the remaining period of a non-final Office Action; or they may set a new time period for the reply. Depending on when the Examiner reviews the Amendment, this may result in not being notified of their decision until additional fees may be needed to continue prosecution. Therefore, it is important to reply to any double patenting rejection instead of holding it an abeyance.

For a full list of changes, the USPTO has published them all here.

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