Patent Eligibility, Duty to Disclose and More: USPTO Patent Eligibility, Duty to Disclose

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Transcript of Patent Eligibility, Duty to Disclose and More: USPTO Patent Eligibility, Duty to Disclose

  • Patent Eligibility, Duty to Disclose and More:

    USPTO Manual of Patent Examining Procedure


    Today’s faculty features:

    1pm Eastern | 12pm Central | 11am Mountain | 10am Pacific

    The audio portion of the conference may be accessed via the telephone or by using your computer's speakers. Please refer to the instructions emailed to registrants for additional information. If you have any questions, please contact Customer Service at 1-800-926-7926 ext. 1.

    TUESDAY, OCTOBER 22, 2019

    Presenting a live 90-minute webinar with interactive Q&A

    Adriana L. Burgy, Partner, Finnegan Henderson Farabow Garrett & Dunner, Washington, D.C.

    Thomas L. Irving, Partner, Finnegan Henderson Farabow Garrett & Dunner, Washington, D.C.

    Christopher C. Johns, Esq., Attorney, Finnegan Henderson Farabow Garrett & Dunner, Washington, D.C.

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  • Disclaimer

    These materials have been prepared solely for educational and informational purposes to contribute to the understanding of U.S. intellectual property law. These materials reflect only the personal views of the authors and are not individualized legal advice. It is understood that each case is fact specific, and that the appropriate solution in any case will vary. Therefore, these materials may or may not be relevant to any particular situation. Thus, the authors and Finnegan, Henderson, Farabow, Garrett & Dunner, LLP (including Finnegan Europe LLP, and Fei Han Foreign Legal Affairs Law Firm), cannot be bound either philosophically or as representatives of their various present and future clients to the comments expressed in these materials. The presentation of these materials does not establish any form of attorney-client relationship with these authors. While every attempt was made to ensure that these materials are accurate, errors or omissions may be contained therein, for which any liability is disclaimed. The authors are indebted to Stacy D. Lewis of Finnegan for assisting in the preparation of these slides.


  • Manual of Patent Examing Procedure (MPEP)

    Ninth Edition, Rev. 08.2017, Last Revised January


    Searchable MPEP:

    A prosecution tool that can be a wealth of information

    to effectively and efficiently prosecute applications.


  • MPEP – Table of Contents Substantive Changes in 2018 Revision Highlighted

    100 Secrecy, Access, National Security, and Foreign


    200 Types and Status of Application; Benefit and

    Priority Claims

    300 Ownership and Assignment

    400 Representative of Applicant or Owner

    500 Receipt and Handling of Mail and Papers

    600 Parts, Form, and Content of Application

    700 Examination of Applicants

    800 Restriction in Applications Filed under 35 U.S.C.

    § 111; Double Patenting

    900 Prior Art, Classification, and Search

    1000 Matters Decoded by Various U.S. Patent and

    Trademark Office Officials

    1100 Statutory Invention Registration (SIR); Pre-Grant

    Publication and Preissuance Submissions

    1200 Appeal

    1300 Allowance and Issue

    1400 Correction of Patents

    1500 Design Patents

    1600 Plant Patents

    1700 Miscellaneous

    1800 Patent Cooperation Treaty

    1900 Protest

    2000 Duty of Disclosure

    2100 Patentability

    2200 Citation of Prior Art and Ex Parte Reexamination

    of Patents

    2300 Interference and Derivation Proceedings

    2400 Biotechnology

    2500 Maintenance Fees

    2600 Optional Inter Partes Reexamination

    2700 Patent Terms and Extensions

    2800 Supplemental Examination

    2900 International Design Applications


  • Discussion Topics

    I. §101 guidance

    II. Updates on the section on the duty of disclosure

    III. Other amendments

    IV. Best practices

    • How will examiners apply the revised MPEP? • How can patent counsel use the revised MPEP to bolster their

    arguments when patents are being examined? • How does the USPTO’s disclosure standard differ from the

    courts’ positions?


  • Subject Matter Eligibility

    • 35 U.S.C. § 101 sets forth the four categories of patentable subject matter: • Whoever invents or discovers any new and useful process, machine,

    manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

    • Judicially-created exceptions to patentable subject matter: subject matter that the courts have found to be outside of, or exceptions to, the four statutory categories of invention, and are limited to abstract ideas, laws of nature and natural phenomena (including products of nature). Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 134 S. Ct. 2347, 2354 (2014) (citing Ass'n for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116, (2013).


  • Section 101: Mayo/Alice Two Step

    • Step 1: Claims directed to patent ineligible subject matter? (i.e., law of nature, natural phenomena, or abstract idea) • No  End of analysis • Yes  Move to Step 2

    • Step 2: Search for an inventive concept • Identify non-patent-ineligible elements of the claim. • Consider these elements both individually and as an

    ordered combination. • Do the additional elements “transform the nature of

    the claim” into a patent eligible-application?



  • Subject Matter Eligibility

    • The January 2018 MPEP Publication incorporates the case law and guidance

    relating to patent subject matter eligibility under 35 U.S.C. § 101 as of

    August 31, 2017, BUT more Guidance has been issued that is not yet in the


    • “This 2019 Revised Patent Subject Matter Eligibility Guidance supersedes MPEP 2106.04(II) (Eligibility Step 2A: Whether a Claim Is Directed to a Judicial

    Exception) to the extent it equates claims ‘‘reciting’’ a judicial exception with

    claims ‘‘directed to’’ a judicial exception, along with any other portion of the

    MPEP that conflicts with this guidance. A chart identifying portions of the MPEP

    that are affected by this guidance will be available for viewing via the USPTO’s

    internet website ( This 2019 Revised Patent Subject

    Matter Eligibility Guidance also supersedes all versions of the USPTO’s

    ‘‘Eligibility Quick Reference Sheet Identifying Abstract Ideas’’ (first issued in

    July 2015 and updated most recently in July 2018). Eligibility-related guidance

    issued prior to the Ninth Edition, R–08.2017, of the MPEP (published Jan. 2018)

    should not be relied upon. However, any claim considered patent eligible under

    prior guidance should be considered patent eligible under this guidance.”


  • USPTO Guidance Issued Since 2018 MPEP Revision

    • Memorandum - Recent Subject Matter Eligibility Decisions: Finjan and Core Wireless (issued April 2, 2018)

    • Memorandum - Revising 101 Eligibility Procedure in view of Berkheimer v. HP, Inc. (issued April 19, 2018)

    • Memorandum - Recent Subject Matter Eligibility Decision: Vanda Pharmaceuticals Inc. v. West-Ward Pharmaceuticals (issued June 7, 2018)

    • 2019 Revised Patent Subject Matter Eligibility Guidance (January 7, 2019) (2019 PEG)