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A New Manual of Patent Examining Procedure (MPEP) is Available / So is A Revised Chapter 2000 For Duty of Disclosure

March 15, 2018
Post by Xiaohong Liu, Ph.D.

A New Manual of Patent Examining Procedure (MPEP), the ninth edition, Revision 08.2017, was made electronically available on January 25, 2018

According to the PTO bulletin for the new MPEP, the revision includes changes to chapters 200, 700-1000, 1200, 1400, 1500, 1800, 2000-2300, 2500, and 2700. Each section that has been substantively revised has an indicator, for example [R-08.2017], meaning that the section has been updated as of August 2017. Appendices L and R were revised to include the laws and rules current as of Aug. 31, 2017, and Appendices T and AI were revised to reflect the PCT Articles, Rules, and Administrative Instructions that were in force effective July 1, 2017.

The previous MPEP, the ninth edition, Revision 07.2015, was published in November, 2015, reflecting Patent Laws and Rules as in force effective July 1, 2015. It is fair to say that a lot of changes in Patent Laws and Rules occurred since then.

One of the major additions in the new MPEP is the inclusion of all of the USPTO’s patent-eligibility guidelines. Thus, the new MPEP is now very helpful resource to look at when a patent-eligibility issue is involved during your patent drafting, prosecution, and especially discussion with the Examiners.  However, three recent court opinions regarding possible factual aspects of any eligibility analysis, from the U.S. Court of Appeals for the Federal Circuit (CAFC), may have caused some uncertainty to some rules for Examiners to decide patent-eligibility based on common knowledge or expertise. 

The other important feature of the new MPEP is a revised chapter for Duty of Disclosure, Chapter 2000. Almost all of the subsections except two have been revised.  You owe the Patent Office “a duty of candor and good faith which is broader than the duty to disclose material information.” MPEP 2001.04. 

In this new MPEP, Chapter 2000 for Duty to Disclose was “updated to generally reflect duty of disclosure owed to the Office by individuals associated with filing and prosecution of any application" to add text explaining aspects of this duty to disclose in accordance with the America Invents Act (AIA); to add a new section to provide guidance on correction of errors in an application; to limit the applicability of certain MPEP sections to reissue applications filed before September 16, 2012; and to revise guidance pertaining to the duty of disclosure in reexamination (ex parte and inter partes ) proceedings for consistency with the language of 37 CFR 1.555. Change Summary, MPEP, Rev. 08.2017.

This new chapter for duty of disclosure is a must to read for “each inventor named in the patent application; each attorney or agent who prepares or prosecutes the application; and every other person who is substantively involved in the preparation or prosecution of the application and who is associated with the inventors, the applicant, an assignee, or anyone to whom there is an obligation to assign the application.” 37 CFR 1.56(c); MPEP 2001.01.  

This duty is limited to those who are substantively involved in the preparation or prosecution of the application. MPEP 2001.01.  You have no such duty if you are a typist, clerk, or similar personnel who assists with an application.  Id.  “The duty of disclosure applies to only to individuals, not to organizations.”  Id.  This duty is not limited to representations to or dealing with the examiner, but extends to proceedings before the Patent Trial and Appeal Board (PTAB) and the Office of the Commissioner for Patents. MPEP 2001.03.

The information for disclosure means all of the kinds of information which is “material to patentability”, including prior art such as patents and publications, information on enablement, possible prior public uses, sales, derived knowledge, prior invention by another, inventorship conflicts, litigation statements, and like. MPEP 2004.04.  Information yielded in court litigations, trial, and/or PTAB trial proceedings such as inter parties review, post-grant review, and covered business method review that may be considered material to pending related patent applications has to be disclosed as well.  MPEP 2001.06.

In this new revision, the Office recognizes the different standards used for “material information in courts and in Office." MPEP 2000.1. The Office issued a Notice of Proposed Rulemaking proposing revisions to the Office standard and is trying to harmonizing its standard with one as set forth by CAFC.  The revised chapter tries to provide guidance on compliance with the duty of disclosure regardless of the materiality standard.  Id.

The new chapter for Duty of Disclosure is only 18 page long, a short one compared to other chapters. Careful reading of the whole chapter, especially “§2004 Aids to Compliance With Duty of Disclosure” is highly recommended if you are a person who has such a duty, since “a finding of “fraud,” “inequitable conduct,” or violation of duty of disclosure with respect to any claim in an application or patent, renders all the claims thereof unpatentable or invalid.” MPEP 2016.


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