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 patent list page on Private PAIR can not show most updated date of document from USPTO for a particulary application, and misslead user think there is not new document or notice from USPTO. Even worse I just received same notice letter which has gone thru over two month to reach me and overdue. To improve the system, it is ideally to set the system automatically send an email to remind the account holder to check... more »

In the case the examiner must withdraw finality of an improper Final rejection, I understand that the Office takes the position that, despite the fact the First Non-Final Rejection was proper, the "second or any subsequent" action may not be made Final if not necessitated by amendments or IDS with its fees/period clauses. However, it absolutely does not make any sense why the examiner should reopen prosecution when amendments... more »

I believe this section could be improved if there were more subheading designations within the section. For example under section A (Relevant Considerations for Evaluating Whether Additional Elements Amount to An Inventive Concept) there are two separate lists (Limitations that the courts have found to qualify as "significantly more" and Limitations that the courts have found not be enough to qualify as "significantly... more »

MPEP § 2112 which address the Inherency Doctrine, makes clear that once a prima facie case of obviousness is established, the burden shifts to applicants to show that the claimed property is not inherent. However, this section of the MPEP (and the MPEP as a whole) fails to articulate how applicants can satisfy this burden. Because of this lack of guidance, Examiners commonly mistakenly apply the unexpected results standard... 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."

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.

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--.

Section 809.02(a) seems to have been left behind in the current version. If this was deliberate, an entry should be included in the Blue Pages.

The previous rules provided an alternative method for correcting errors in provisional applications. Specifically, in § 201.03 section VI the 8th edition (Rev. 9 2012) the MPEP instructed that filing a non-provisional application with inventor overlap would correct any errors as to inventorship in a provisional application. This language, however, is absent in the present edition even though it is based on the same law... 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 »

706.07(a) discusses the fact that an action cannot be made final if a new ground of rejection is not necessitated by amendment and/or Applicant's IDS. However, it provides no information pertaining to what actually constitutes a new ground of rejection. The MPEP Appeal section; however, 1207.03(a), provides substantive guidance on what constitutes a 'new rejection' in an Examiner's Answer which appears also to be applicable... more »

It appears, in my experience, that there is confusion regarding this section of the MPEP and it would be very helpful to examiners if the MPEP would provide a more extensive discussion of preambles, intended uses and when statements in preambles actually limit the claimed Invention. Quite respectfully, the statement in the MPEP, upon citing In re Schriber, indicates 'If a prior art structure is capable of performing... more »