Patent Eligibility, Duty to Disclose, and More: USPTO Manual of Patent Examining Procedure Guidance
Course Details
- smart_display Format
On-Demand
- signal_cellular_alt Difficulty Level
- work Practice Area
Patent
- event Date
Thursday, October 13, 2022
- schedule Time
1:00 p.m. ET./10:00 a.m. PT
- timer Program Length
90 minutes
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This 90-minute webinar is eligible in most states for 1.5 CLE credits.
This CLE course will examine patent eligibility, duty to disclose, and other updated sections of the USPTO Manual of Patent Examining Procedure (MPEP). The panel will explore the impact on patent prosecution and beyond and provide best practices for applying the guidance or how to remedy instances where guidance is not followed, particularly in the area of duty to disclose.
Ms. Burgy focuses on opinion work, client counseling, patent prosecution and management, and litigation in the chemical, pharmaceutical, and biotechnology arts. She counsels her clients on a diverse range of patent issues. She assists clients on single-patent issues as well as complex matters involving multiple patents and applications requiring ongoing advice on patent portfolio strategy and development, with an eye towards litigation. She has assisted clients in the early stages of development through due diligence and patent portfolio analysis.
Mr. Irving has 47 years of experience in the field of IP law. His practice includes due diligence, patent prosecution, reissue and reexamination, patent interferences, and counseling, including prelitigation, Orange Book listings of patents covering FDA-approved drugs, and infringement and validity analysis in the chemical fields, as well as litigation. He has served as lead counsel in many patent interferences.
Dr. Browning focuses on patent litigation and appeals. He has led teams as first chair at trial, at Markman proceedings, and on appeal. His litigation experience includes taking and cross examining witnesses at trial, briefing and arguing dispositive motions, drafting appellate briefs, and arguing cases on appeal. He has also managed day-to-day litigation activities in actions involving multiple parties. In addition, he advises clients on patent matters, including coordination of prosecution and U.S. and foreign litigation strategy.
Mr. Johns maintains a diverse patent practice, including drafting and prosecuting patent applications related to electronics, software, telecommunications, and business methods; providing client counseling and portfolio management; and handling post-grant proceedings including inter partes review and covered business methods. He also provides freedom-to-operate opinions and has assisted on district court litigations related to telecommunications, computer software, and mechanical devices. Before joining Finnegan, he served as a patent examiner at the U.S. Patent and Trademark Office (USPTO) for nearly five years.
The MPEP is a prosecution tool that can be a wealth of information to prosecute applications effectively and efficiently. Prosecutors should understand the most current version of the MPEP and their impact to further those goals of effective and efficient prosecution. Prosecutors should also keep in mind that if the issued patent is dragged into an AIA post-grant proceeding, such as IPR or PGR, PTAB will probably not be interested in the MPEP, but will be interested in cases relied on therein.
The revised MPEP guidance based on recent decisions on patent eligibility, incorporating memos explaining implementation of the Section 101 framework, continues to be the best reference for practitioners in the absence of Supreme Court guidance or legislative reform. The included guidance provides helpful reminders to practitioners of how best to frame and argue rejections under Section 101.
But of course, the prosecutor also needs to be aware of how judicial authority treats 101 differently from the way the PTO sees it. The panel will review the most recent 101 case law relating to biotech and computer software subject matter, including the Supreme Court’s recent denial of certiorari in Am. Axle & Mfg. v. Neapco Holdings L.L.C., 2022 U.S. LEXIS 3240 (U.S., June 30, 2022). The latest revision to the MPEP also updates the section on the duty of disclosure. When a patent is the subject of an infringement action or a post-grant proceeding under AIA, examiners must be made aware of such litigation and any material arising from it. The MPEP notes such proceedings may "yield information that may be considered material to pending related patent applications," such as prior art or evidence related to inventorship. And what recourse does the prosecutor or patentee have if the guidance of the MPEP relative to duty of disclosure is not followed during prosecution? Pending children applications? Supplemental examination?
Listen as our authoritative panel of patent attorneys discusses and examines the MPEP and what it means for patent prosecution. The panel will discuss patent eligibility and duty of disclosure, as well as other amendments to the MPEP. The panel will offer best practices for applying the guidance.
- Patent eligibility
- Duty to disclose
- Other amendments
- Best practices for applying the new guidance
The panel will review these and other vital issues:
- How will examiners apply the most recent version of the MPEP?
- How can patent counsel use the MPEP to bolster their arguments when patents are being examined? And how, if at all, can principles of the MPEP be used to bolster patents subject to AIA post-grant proceedings or litigation?
- How does, if at all, the USPTO's disclosure standard differ from the courts' position?
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