Patent Eligibility, Duty to Disclose and More: USPTO ...media. Patent Eligibility, Duty to Disclose
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Patent Eligibility, Duty to Disclose and More:
USPTO Manual of Patent Examining Procedure
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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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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: https://mpep.uspto.gov/RDMS/MPEP/current#/current/d0e18.html
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
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
1300 Allowance and Issue
1400 Correction of Patents
1500 Design Patents
1600 Plant Patents
1800 Patent Cooperation Treaty
2000 Duty of Disclosure
2200 Citation of Prior Art and Ex Parte Reexamination
2300 Interference and Derivation Proceedings
2500 Maintenance Fees
2600 Optional Inter Partes Reexamination
2700 Patent Terms and Extensions
2800 Supplemental Examination
2900 International Design Applications
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
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 (http://www.uspto.gov). 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)