US MPEP

1. US MPEP
Abhishek Narendra
Patent Engineer
Metayage IP Strategy Consulting LLP

2. US MPEP (Manual of Patenting
Examining Procedure)
•Is published by the USPTO (updated regularly)
and describes all the laws and regulations to be
followed while prosecuting US Patent
Applications.
•The first version of the MPEP was published in
1920.
•There are a total of 28 chapters.
•The US Patent Bar/Agent Examination is purely
based on the laws enclosed within the MPEP.

3. Chapter 1: Secrecy, Access,
Natural Security, and Foreign Filing
•Patent Applications are held confidential by the
USPTO up till a duration of 18 months.
•Patents can only be published and available to
the public only after a time duration of 18
months.
•However, the public may view details regarding
patent applications, but only upon
PERMISSION

4. •Prior to patent publication, access is limited to:
i) the inventor
ii) an attorney or agent who filed the particular
application
iii) an assignee of record in the application
iv) a person having written permission from
either one of the above, asking for a request to
obtain status information of a pending
application

5. •A license from the USPTO is required before any
foreign filing of an invention made in the USA.
•A person filing a patent in the US may not file a
patent in any foreign country prior to 6 months
after filing in the US.
•There are severe penalties if this law is violated.
•The applicant could be imprisoned for 2 years or
a $10,000 file could be charged.

6. Chapter 2: Types, Cross-Noting,
and Status of Application
•The filing date for a provisional and complete
application is the date on which the drawings
and specification were received by the USPTO.
•Sole Application: One inventor
•Joint Application: More than one inventor
•A provisional application does not allow legal
protection to the applicant nor is examined by
the USPTO.

7. •Correction of inventorship is allowed, by filling
an amendment.
•Inventors may file a patent jointly even if they,
(i) did not work together at the same time, (ii)
did not make the same contribution, (iii) did not
make a contribution to subject matter of each
claim
•If a joint inventor refuses to join in an
application, then contribution may be made by
the other inventors.

8. Chapter 3: Ownership and Agreement
•Ownership of a patent gives the applicants the
right in excluding anyone to make, use, sell, or
import the invention patented.
•An Issue Fee(s) Transmittal form must be
submitted for a patent to be issued to an
assignee, otherwise it will be issued to applicant.
•Only a sole owner or assignee can take over the
prosecution of the patent application.

9. Chapter 4: Representative of Inventor
or Owner
When filing an application, a corresponding
address must be in an application datasheet and
identified by the USPTO, during the filing.
•If a joint inventor refuses to join in an
application for a patent or can not reached, then
the application may be made by the other
inventor(s) on behalf of the non-signing
inventor.
•The oath must clearly explain the circumstances.

10. Chapter 5: Receipt and Handling of
Mail and Papers
•The filing date is the date the patent application
was received by the USPTO.
•Provisional: must contain specification,
drawings
•Non-Provisional : must contain specification,
drawings, at least one claim

11. Chapter 6: Parts, Forms, and
Content of Application
•An oath or declaration must be filed in a
complete application (optional for provisional),
and must contain:
inventor full name, nationality, statement from
person making oath stating he/she has reviewed
the application, decelerate acknowledgement,
residential/mailing address of inventor, any
foreign applications claiming priority (if any)

12. •In return for a patent, the inventor is required to
make a disclosure of the invention to the public,
and must be written in English. The disclosure
generally specifies the specification and
drawings.
•US Patent Application Format

13. Chapter 7: Examination of
Applications
•The basic requirements for patentability are:
1) novelty (USC 102) 2) non-obvious (USC 103)
3) Usefulness (USC 101)
•Rejection is made by examiner in the subject
matter is un-patentable.
•Objection, if the claim format is improper.
•In rejecting claims, the examiner must cite the
reference in which he/she came upon. (useful for
attorney/agent when preparing office actions)

14. •Causes for Rejection: the invention was known,
was patented in another country, applicant
abandoned the application, US/International
application received an earlier filing date
•USC 102 rejections categories
•102(a): any publication having earlier
publication data
•102(b): publication more than 1 year before filed
•102(e): patent publications published before
effective filing date

15. •102(c): rejection due to abandonment
•102(d): if applicant filed a foreign patent more
than 12 months before the US filing date
•102(f): if the applicant was not the inventor
•USC 103 Rejections, examiner must consider:
•1) scope and content of prior art 2) difference
between invention and prior art 3) level of skill
in prior art
•Office Actions and Interviews (sec 710, sec 713)
•

16. Chapter 8: Restriction in
Applications, Double Patenting
•Examiner raises a restriction requirement if
many independent claims in one invention.
•Double Patenting refers to an applicant receiving
multiple patents claiming the same invention
•If an inventor disagrees with the restriction
requirement, then he/she may request for
reconsideration, withdrawal, or modification or
the requirement set by the examiner. (Sec 818)

17. Chapter 12: Appeal
•An appeal may be made by: an applicant whose
claims have been twice rejected and a patent
owner in a re-examination hearing
•The notice of appeal must be filed within the
period of reply of the last office action.
•The applicant must also file a brief explaining
the error in the examiner’s reasoning within 2
months from filing the notice of appeal.

18. Chapter 13: Allowance and Issue
•A notice of allowance (NOA) is issued by the
examiner if he/she believes the claims stand no
rejection, however NOA doesn’t mean the patent
is yet granted.
•After the NOA receipt, the applicant must pay
the fees within 3 months, otherwise the
application will become abandoned.

19. Chapter 14: Correction of Patents
•After a patent is issued, the patent may be
corrected by: reissue, issue of certificate of
correction, disclaimer
•Typical errors that can be corrected in a reissue
application are: claims are narrow or broad,
inaccuracies in the disclosure, incorrect
references to prior art or pending application,
substantial error in drawings
•Certificate of Correction: spelling, grammar
•Disclaimer: particular owner relinquishes rights

20. Chapter 18: Patent Cooperation
Treaty
•An applicant can file internationally within the
PCT and receive priority of the US filing date if
the international filing is done within 12 months
and the applicant has a foreign filing license.
•Within 13 months after international filing, the
Receiving Office prepares and transmits a copy
of the international application (called the
“search copy”) to the International Searching
Authority (ISA) and forwards the original
application to the International Bureau (IB).

21. Chapter 19: Protest

•Third parties ( member of public) may file a
protest if he/she is unhappy with a patent
application up to 2 months after date of
publication but before notice of allowance.
•Protest cannot be filed for granted patents.

22. Chapter 21: Patentability
•An invention can be patented only if it falls into
the categories: process, machine, manufacture
and composition of matter
•A business model is patentable only if it’s tied to
a particular machine/object or transforms some
object.
•Rejections on basic of utility (usefulness)
•Patentability of a process-by-process claim is
based on the product and doesn’t depend on the
method of production.

23. •Prior art examples: filed patent, PhD thesis,
technical paper, publically displayed document
•A person is eligible to file a patent only if the
invention was patented or published for an year
prior to the filing date.
•Inventors may apply for a patent jointly: even if
they did not work together, did not make the
same amount of contribution, did not make a
contribution to the subject matter of every claim

24. •Best Mode Requirement: Allows applicant to
publish to the public whatever he/she knows to
the best of their ability regarding the invention,
and keep the remaining information trade secret
•Means Plus Function (6
th
paragraph of Sec 112)
for claim rejection: “means for” or “step for”
phrase, modified by functional language (ex:
means for measuring), or doesn’t contain
specific structure or material

25. Chapter 23: Interference
Proceedings
•An applicant may suggest an interference if: 1)
provide information to identify the application
2) provide a claim chart (for the interfere claims)
showing how it interfere with the prior art ref
3) claims chart also for amended claims
4) chart for every reduction the applicant wishes
to claim benefit for
•An applicant cannot suggest an interference, but
may alert the examiner of an application
claiming interfering subject matter

26. Chapter 25: Maintenance Fees
•After a patent is issued, maintenance fees must
be paid accordingly.
•$900, 3 years after grant
•$2300, 7 years after grant
•$3800, 11 years after grant
•No maintenance fees are required for design or
plant patents.

27. Abhishek Narendra
Patent Engineer
Metayage IP Strategy Consulting LLP
- http://www.metayage.com
- [phone]
 - [email protected]
Thank you!