Discuss the Manual of Patent Examining Procedures (MPEP)

The second paragraph of MPEP 706.02(f)(1), section II (the bottom of the right column on page 700-37) reads "all references to 35 USC 102 in the examples and flowcharts below are to the version of 35 USC 102 in effect on March 15, 2012 (the pre-AIA version)."

While this is technically true, I believe that "March 15, 2012" was intended to read "March 15, 2013," one day before the first-inventor-to-file provisions of the... more »

The URLs for the http://mpep.uspto.gov site are not currently friendly and it can be difficult to determine what a link might lead you to.

The link for MPEP 1200 is currently: http://mpep.uspto.gov/RDMS/detail/manual/MPEP/current/d0e18.xml#/manual/MPEP/DC1_FPindexR-07.2015/d0e122292.xml

It would be helpful if it were something more like this: http://mpep.uspto.gov/e9r072015/MPEP/1200

The link for 35 USC 101 is currently:... more »

R-07.2015 has a 10/2015 publication and an 11/2015 publication. The two publications differ in substance, not merely in form. For ease and clarity of citation, I suggest the revision number match the publication date in the future. Alternatively, I suggest the MPEP be referred to primarily by a publication date (e.g., "E9 P-11.2015") rather than a revision number.

I understand that presently the "R" number is the... more »

This is a followup to https://uspto-mpep.ideascale.com/a/dtd/Correction-of-Inventorship/549565-9426 by @zmthomas. I admit that I don't have nearly as much design-patent experience as some of my colleagues. Please let me know if I am missing something!

I have searched sections 700, 800, and 1500 (Jan. 2018). The only places I can find an explanation of how to respond to a restriction requirement in a design application... more »

MPEP 608.01(n)(III) is labeled "infringement test," but the "infringement test" is actually described in the previous section, MPEP 608.01(n)(II), third paragraph, discussing whether or not claims could be met without infringing the parent claims. In contrast, MPEP 608.01(n)(III) references infringement in its first paragraph, but then only discusses the "further limitation" requirement.

MPEP Sec. 602.01(c)(1) cites the wrong version of CFR 1.48. Specifically, it cites the pre-aia version and not the latest version.

MPEP 2163 is about the Written Description requirement. MPEP 2163(II)(A)(3)(a) cited Autogiro as support for the following quote:
"An applicant may show possession of an invention by disclosure of drawings or structural chemical formulas that are sufficiently detailed to show that applicant was in possession of the claimed invention as a whole... Autogiro Co. of Am. v. United States, 384 F.2d 391, 398, 155 USPQ 697,... more »

The current text of MPEP 2111.05, if read quickly, seems to suggest that a "function" of "descriptive material" itself carries patentable weight. But this interpretation is not correct: A sheet of instructions as part of the kit claim in In re Ngai (cited in this section) was found to *not* have patentable weight. The "functional" nature of the particular instructions did not save the claims from anticipation over a... more »

The second paragraph of this section states that "Applicant may extend the time period of reply up to six months in accordance with 37 CFR 1.136(a)."

As this is a paragraph describing the mailing of a requirement for information that is NOT part of an action on the merits, it is unclear to me whether the maximum statutory period for reply of six months is applicable.

Regardless, as drafted it seems ambiguous to me;... more »

Introduction (Nov. 2015), p. 1, right column, bottom, reads, in part: "The primary function of the rules is to advise the public of the rules which ... must be followed before the USPTO". Would you please rewrite the beginning part of that sentence for clarity? It seems to me a bit redundant.

Suggestion: "The rules govern conduct of examiners, applicants, and patent practitioners before the Office. The rules are available... more »

2141.01(a)(I) need to be completely re-written! This section correctly cites In re Bigio, 381 F.3d 1320, 1325, 72 USPQ2d1209, 1212 (Fed. Cir. 2004). However, everything following that citation that references KSR is nonsense! The 'problem' described in KSR was in relation for reasoning associated with combining the teachings of references. It had absolutely NOTHING to do with deciding whether a reference is analogous... more »

MPEP 1309.02 says applications with errors preventing issue "are placed on the examiner's 'expedited' tab in eDan and should be taken up for immediate action." We have not used eDan in several years, and I think it was even removed from our computers nearly four years ago. So "eDan" should be replaced either with "DAV" or "PE2E-DAV."

Could the sentence saying that serious burden on the examiner be corrected back to what it said in the previous version (there is clearly said it's inapplicable). Now the language where this is first discussed appeared to be missing something

Preparing EPS submission, i notice most of the forms are expired, that is, beyond their 'use by' dates. Where are up-to-date forms located?

Immediately following the Title of section 602.01(c)(1) in the Editor Note, it seems that "applications" must be changed to --requests--.