By Stephanie Lawley
In November 2024, the United States Patent and Trademark Office (USPTO) published a revision to the Ninth Edition of the Manual of Patent Examining Procedure (MPEP). The MPEP instructs examiners regarding the procedures and standards for examining U.S. patent applications before the USPTO.
Included in the MPEP are discussions of the rules, statutes, and case law governing U.S. patent prosecution and other proceedings before the USPTO. The MPEP does not have the rule or force of law. However, the MPEP does inform the public about the USPTO’s interpretation and application of U.S. patent law to the examination of U.S. patent applications and other proceedings before the USPTO.
The USPTO periodically revises the MPEP in view of changes in the patent law and USPTO policy. These changes include, for example, updating form paragraphs included in office actions, case law, and cross-references. Some examples of the most recent revisions include, but are not limited to, the following:
- The addition of further case law regarding inventors and joint inventors having to be natural persons with citations to and discussions of Thaler v. Vidal, 43 F.4th 1207 (Fed. Cir. 2022); of Utah v. Max-Planck-Gesellschaft zur Forderung der Wissenschaften E.V., 734 F.3d 1315, 107 USPQ2d 1989 (Fed. Cir. 2013); and Beech Aircraft Corp. v. EDO Corp., 990 F.2d 1237, 26 USPQ2d 1572 (Fed. Cir. 1993) (MPEP § 2109(VII));
- A revision to clarify that when more than one prior art reference is used as the basis of an obviousness rejection, it is not required that the references be analogous art to each other but to the claimed invention and added citations to Sanofi-Aventis Deutschland GMbH v. Mylan Pharms. Inc., 66 F.4th 1373, 2023 USPQ2d 552 (Fed. Cir. 2023) and Corephotonics, Ltd. v. Apple Inc., 84 F.4th 990, 2023 USPQ2d 1202 (Fed. Cir. 2023) (MPEP § 2141.01(a));
- The addition of a new paragraph discussing how applicants can include statements regarding inventor-originated public disclosures in the specification upon filing and after filing (MPEP §§ 2153.02, 2154.02(a) and (b));
- A revision to incorporate guidance from Guidelines for Assessing Enablement in Utility Applications and Patents in View of the Supreme Court Decision in Amgen Inc. et al. v. Sanofi et al., 89 FR 1563 (January 10, 2024) (MPEP § 2164.01(a));
- The addition of a new section titled “Helpful Hints for Sequence Rules Compliance under WIPO Standard ST.26” to provide further guidance for Sequence Rules Compliance under WIPO Standard ST.26 (MPEP § 2417);
- A revision to add guidance based on USPTO Officially Transitions to Issuing Electronic Patent Grants in 2023, 88 FR 12560 (February 28, 2023) (MPEP § 1309(IV));
- The addition of a new section titled “Design Patent Practitioner Bar” which incorporates guidance from Representation of Others in Design Patent Matters Before the United States Patent and Trademark Office, 88 FR 78644 (November 16, 2023) (MPEP § 1502.02); and
- The addition of a new paragraph discussing when the non-DOCX fee is applicable for non-electronically filed applications (MPEP § 607(IV)).
The MPEP was last revised in February 2023. The latest revision, published in November 2024, is current as of January 31, 2024. Any changes to USPTO procedures or policies after January 31, 2024, have not been included in the current MPEP. A complete list of the latest revisions to the MPEP may be found on the USPTO’s website at https://www.uspto.gov/web/offices/pac/mpep/mpep-0005-change-summary.html.
