TRUMP ADMINISTRATION ANNOUNCES SUBSTANTIAL CHANGES MAKING IT MORE DIFFICULT TO SECURE PATENT PROTECTION IN UNITED STATES

On January 31, 2018, the United States Patent and Trademark Office under the direction of Commissioner for Patents Drew Hirshfeld, announced substantial changes to the Manual of Patent Examination Procedure which affect examination policy, patent quality management, and international patent cooperation procedures before the United States Patent Office.  More than seventy-five percent of the manual, twenty-two of the twenty-nine chapters, defining procedures for patent examination have been amended.  This constitutes the most significant change in USPTO procedure and policy since the Leahy-Smith America Invents Act in 2011 under the Obama administration.

The January 2018 publication of Revision 08.2017 substantively revises MPEP Chapters 200, 700, 800, 900, 1000, 1200, 1400, 1500, 1800, 2000, 2100, 2200, 2300, 2500, 2700, and Chapter FPC (Form Paragraph Book), the Table of Contents, Foreword, Introduction, Subject Matter Index, and all appendices except Appendix I and Appendix P.  A summary of the changes to each of the chapters and appendices is provided below.  A more detailed review of the specific changes to each of the MPEP sections can be found on the United States Patent and Trademark Office site at https://www.uspto.gov/web/offices/pac/mpep/mpep-0005-change-summary.html.

Chapter 200 was revised to clarify when a petition and petition fee to accept an unintentionally delayed benefit or priority claim is necessary to correct an error in the benefit or priority claim; and to incorporate recent case law holding that a child application was entitled to the benefit of a parent application where the child application was filed on the same day that a patent issued on the parent application.

Chapter 700 was revised to incorporate a memorandum regarding the recordation of search history data; to reflect recent case law regarding the requirements for a patent to be usable as prior art under pre-AIA 35 U.S.C. 102(e) as of a relied upon provisional application’s filing date; to reflect recent case law and guidance relating to patent subject matter eligibility; to add a section directed to rejection of improper “Markush” claims in accordance with Office guidance published in 2011; to update information regarding petitions to make special based on age or health and the requirements for being granted accelerated examination status; to update the guidance on interview practice to be consistent with the forms and tools currently in use in the Office; to add information relating to the timing of applicant’s submissions concerning the prior art exception under 35 U.S.C. 102(b)(2)(C) or prior art exclusion under pre-AIA 35 U.S.C. 103(c); and to mention a fact situation where one particular uncorroborated inventor’s declaration under 37 CFR 1.132 was recently found by the Federal Circuit to provide insufficient proof of inventorship.

Chapter 800 was revised to limit the discussion of Markush claims to election of species requirements and update the text for consistency with Office guidelines published in 2011; and to rewrite the discussion of provisional nonstatutory double patenting (NDP) rejections for clarification and consolidation of existing Office policies.

Chapter 900 was revised to add a discussion of Global Dossier Public Access and to provide additional information about the field of search where the proper classification corresponds to a disclosed, but unclaimed, embodiment.

Chapter 1000 was revised to include the delegation of authority to the Central Reexamination Unit (CRU) Supervisory Patent Reexamination Specialists (SPRS) for three types of petitions and to include a new section addressing requests decided by the Associate Commissioner for Patent Information Management.

Chapter 1200 was revised to add further information regarding the pre-appeal brief conference request program; to indicate that the Patent Appeals Center, rather than Board, reviews appeal briefs for compliance; to update guidance regarding the treatment of certain claims after a Board decision; and provide additional information pertaining to the dismissal of appeals.

Chapter 1400 was revised to update and clarify the policies and procedures regarding recapture analysis, oath or declaration requirements, and restriction practice in reissue applications; to rewrite the discussion of disclaimers and provisional nonstatutory double patenting (NDP) rejections for clarification and consolidation of existing Office policies; to include changes made to 35 U.S.C. 119(e) and 37 CFR 1.78 in the implementation of the Patent Law Treaties Implementation Act (PLTIA); to include changes made to 37 CFR 1.55 and 1.78 that were made in the final rule implementing the Hague Agreement Concerning International Registration of Industrial Designs (“Hague Agreement”); to incorporate a memorandum regarding the recordation of search history data; to further add procedures if the patent for which the reissue application was filed had been the basis of a PTAB trial; and to update procedures to include actions by the Central Reexamination Unit.

Chapter 1500 was revised to update and clarify the discussion of the “ordinary observer” test in determining novelty; to update and clarify guidance pertaining to new matter in design patent applications, especially with regard to broken lines and drawing amendments; to provide guidance regarding compliance with the written description requirement for design applications; and to add a discussion of design patent term both before and after implementation of the Hague Agreement.

Chapter 1800 was revised to add the Intellectual Property Office of Singapore (IPOS) as an International Searching Authority (ISA) available to nationals and residents of the United States; to update information regarding the arrangement between the USPTO and the Israel Patent Office (ILPO); and to provide information about using WIPO’s ePCT system for preparation of the PCT Request, explaining that a foreign filing license from the USPTO does not authorize the export of subject matter into ePCT for generating a PCT Request for filing with the RO/US.

Chapter 2000 was updated to generally reflect duty of disclosure owed to the Office by individuals associated with filing and prosecution of any application; to add text explaining aspects of the duty to disclose in accordance with the America Invents Act (AIA); to add a new section to provide guidance on correction of errors in an application; to limit the applicability of certain MPEP sections to reissue applications filed before September 16, 2012; and to revise guidance pertaining to the duty of disclosure in reexamination (ex parte and inter partes) proceedings for consistency with the language of 37 CFR 1.555.

Chapter 2100 was revised to reflect recent case law and guidance relating to patent subject matter eligibility; to add an overview of “Markush” claims and update the discussion of when a Markush grouping may be indefinite under 35 U.S.C. 112(b); to reflect recent case law regarding the requirements for a patent to be usable as prior art under pre-AIA 35 U.S.C. 102(e) as of a relied upon provisional application’s filing date; and to reflect recent case law pertaining to “reasonable diligence,” the determination of obviousness, and written description.

Chapter 2200 was revised to clarify information regarding 37 CFR 1.501 submissions, and to specify that proof of service is required by 37 CFR 1.501(e); to include changes made to 37 CFR 1.55 and 1.78 that were made in the final rule implementing the Hague Agreement; and added text pertaining to treatment of claims after an appeal in a reexamination is decided.

Chapter 2300 was revised to add a discussion of recent case law pertaining to written descriptive support for claims involved in an interference; to provide guidance on the limited applicability of pre-AIA 35 U.S.C. 102(g) to applications filed on or after March 16, 2013; and to provide an overview of derivation proceedings and their impact on examination with a cross-reference to the Board’s Patent Trial Practice Guide for information pertaining to action at the Board during derivation proceedings.

Chapter 2500 was revised to add information relating to the Patent Maintenance Storefront; and to explain when the maintenance fee paid with a petition under 37 CFR 1.378 will be refunded.

Chapter 2700 was revised to update the reproduction of 35 U.S.C. 156(d)(1) and add 35 U.S.C. 156(i) to include changes made by Public Law 114-89, 129 Stat. 700 (November 25, 2015).

All in all, the changes are characterized as further clarifying procedural changes proposed in recent times.  However, the reality is the changes impose further obligations and evidentiary burdens on applicants seeking to secure patent protection in the United States.  For more information on the changes to the Manual of Patent Examining Procedure, please do not hesitate to contact Barry Kane at bkane@kaneplc.com or by telephone at 616-726-5905.

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