MPEP – Everything You Wanted to Know About Patents (But Were Afraid to Ask)

A post from our student blogger Sarah Goodman

The Manual of Patent Examining Procedure (MPEP) is published by the United States Patent and Trademark Office. The MPEP contains the patent laws and rules. Patent examiners use the MPEP to evaluate patent applications. The MPEP is continually revised as the regulations change and important case law is established. The first edition of the MPEP was published in 1949.

The MPEP is used by both patent examiners and patent practitioners. Patent examiners use the MPEP by following the guidelines to decide whether to grant or reject a patent application. Patent agents and attorneys can use the MPEP as a handbook for rules of drafting a patent application. The MPEP contains examples of scenarios pertaining to the rules. The information in the MPEP is crucial because a patent application needs to follow the USPTO regulations.

The MPEP is divided into 27 chapters and 7 appendixes. The material covers more than 2,000 pages. Each chapter addresses a different aspect of patent law. For example, chapter 600 contains the guidelines for the parts, form, and content of a patent application. Chapter 2100 provides the guidelines on patentability. Appendix L contains patent laws and Appendix R describes patent rules.

In the MSPL program at the University of Notre Dame, we are reading and studying sections of the MPEP. To become a certified patent agent, it is necessary to pass the patent bar. This examination tests the material contained in the MPEP. The examination includes an electronic version of the MPEP that is searchable within chapters. The patent bar exam is difficult and has approximately a 50% pass rate. The classes in the MSPL program at the University of Notre Dame help us to prepare for this examination which we will all take this Spring.

An American Patent in Paris

A post from our student blogger Sarah Goodman

Over winter break I was in Paris, France. During my trip, I visited research institutes and decided to learn more about patent law in Europe. The European Patent Organisation currently includes 38 member states, and European patents are granted by the European Patent Office.  There are several important differences between European and American patent law.

According to Article 54 EPC (European Patent Convention), if an invention was made publicly available by an inventor or a third party before the filing date of a patent application, the application will be rejected. In the United States according to 35 U.S.C. § 102, there is a one-year grace period beginning with the disclosure of an invention before losing patent rights. However, an inventor in the United States would lose any potential patent rights in Europe even if the invention is publicly available only in the United States.

U.S. patent law requires inclusion of the best mode of practicing the invention according to 35 U.S.C. § 112.  The disclosure of the best mode ensures that the public has access to the best method of practicing the invention. The lack of a best mode cannot be used to invalidate a patent but still must be included in the patent application. European patent law does not require inclusion of the best mode in a patent application. Article 83 EPC only requires the inclusion of at least one method of practicing the invention.

European patent applications usually contain two-part claims. A two-part claim includes features of the invention that are well-known, then a phrase such as “characterized by,” followed by features that constitute the invention. American patent applications usually contain only one part claims with no separating phrase between the well-known features and the inventive features. In the U.S., this type of two-part claim is known as a Jepson Claim. A disadvantage of using Jepson Claims in the U.S. is that anything before the characterizing portion is regarded by definition of the claim structure as previously known even if a novel feature is accidently included which can negatively affect patentability. In European patent law, if an applicant puts an inventive feature in the pre-characterization portion, the applicant will be asked to move the feature to the correct location.

The MSPL program at the University of Notre Dame prepares us for the U.S. Patent Office’s patent bar exam. Successful certification will permit an individual to file in the United States only. However, it is common for American law firms to work with international legal counsel, so it is important for patent agents in the U.S. to understand the major differences.

Leahy-Smith America Invents Act

A post from our student blogger Sarah Goodman

During the Fall semester our MSPL class has attended several presentations on the Leahy-Smith America Invents Act. This Act was signed into law by President Obama on September 16, 2011. The America Invents Act changes some aspects about patent law in the United States and also includes new material. Most of the changes have already been implemented, and the final modifications will be implemented on March 16, 2013. Presented in this blog post are a couple of the major changes.

One of the best-known adjustments to patent law is the shift from the current First-to-Invent system to a First-Inventor-to-File system. This change will come into effect on March 16, 2013. This adjustment is based on the change to 35 U.S.C. §102 which states that a U.S. patent will not be granted if “the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.” The filing date of the earliest patent application to which a U.S. patent application claims the benefit of priority is considered the effective filing date. This provision eliminates the legal concept of an “invention date.” It is important to remember that an individual cannot claim inventor status unless that individual actually invented the material claimed in the patent application.

Another important change was implemented on September 16, 2011 concerning the best mode requirement. The best mode is defined as the preferred mode for practicing the invention. The disclosure of the best mode ensures that the inventor fully enables the public to have access to the best method of using the invention. Previously, lack of disclosure of the best mode was a basis to invalidate or cancel an issued U.S. patent. The America Invents Act has modified 35 U.S.C. §282 by removing the lack of a best mode as a rationale for potential U.S. patent invalidity. However, 35 U.S.C. §112, which addresses the requirement for inclusion of the best mode has not been amended. Therefore, patent applicants must still comply with the requirement to disclose the best mode contemplated by the inventor for carrying out the invention.

The Leahy-Smith America Invents Act will affect U.S. patent applications that are filed on or after the dates of specific law implementation. Therefore U.S. patent practitioners will need to have a working knowledge of the laws before and after the new changes of the America Invents Act.