USPTO Provide Guidance On Patent Examination Policies And Procedures, Revise Manual Of Patent Examining Procedure
Published date | 15 August 2020 |
Subject Matter | Intellectual Property, Patent |
Law Firm | Buchanan Ingersoll & Rooney PC |
Author | Mr Brandon J. Drennen |
Summary
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)...
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