A Few Useful Sections Of The Manual Of Patent Examining Procedure

May 29, 2009

in Prosecution Strategy,The MPEP

As regular readers of this blog know, I advocate using the USPTO’s Manual of Patent Examining Procedure (MPEP) as primary authority during prosecution.  I discussed my reasons for doing so in this earlier post.  Basically, it is the USPTO’s official manual, so its instructions to Examiners are beyond dispute.

From time to time, when responding to an Office action or preparing a post for this blog, I come across interesting, useful MPEP sections that I think that other practitioners may not know about.   Admittedly, these sections are not useful in everyday prosecution.  Nonetheless, in certain, specific circumstances, these sections of the MPEP may be helpful.

Some help for older applications
Often, the prosecution of an application extends into third Office actions.  In these cases, as well as “mature” cases, take note of §707.02 of the MPEP.

707.02 Applications Up for Third Action and 5-Year Applications
The supervisory patent examiners should impress their assistants with the fact that the shortest path to the final disposition of an application is by finding the best references on the first search and carefully applying them.

The supervisory patent examiners are expected to personally check on the pendency of every application which is up for the third or subsequent Office action with a view to finally concluding its prosecution.

Any application that has been pending five years should be carefully studied by the supervisory patent examiner and every effort should be made to terminate its prosecution. In order to accomplish this result, the application is to be considered “special” by the examiner.

Some help for a generic rejection of a group of claims
We have all seen rejections in which an Examiner has erroneously characterized several independent claims, grouped them together, and generically rejected the group.  In situations like this in which an Examiner has grouped claims together to make a generic, omnibus rejection, §707.07(d) of the MPEP may be of interest.  That section warns:

707.07(d) Language to be Used in Rejecting Claims


A plurality of claims should never be grouped together in a common rejection, unless that rejection is equally applicable to all claims in the group.

Some help for inventor filed (pro se) applications
The MPEP expressly instructs Examiners to offer specific help to pro se applicants by writing proposed claims.  If you are a pro se applicant, keep §707.07(j) in mind.

707.07(j)(I) State When Claims Are Allowable

When, during the examination of a pro se application it becomes apparent to the examiner that there is patentable subject matter disclosed in the application, the examiner should draft one or more claims for the applicant and indicate in his or her action that such claims would be allowed if incorporated in the application by amendment.

Coming Next – More Help from the MPEP

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© 2009, Michael E. Kondoudis

The Law Office of Michael E. Kondoudis
DC Patent Attorney

{ 8 comments… read them below or add one }

e6k June 4, 2009 at 12:50 am

“so its instructions to Examiners are beyond dispute.”

Except when “office policy”, “TC policy”, or “AU policy” is different than what is explicit in the MPEP.

mike June 4, 2009 at 1:36 pm

The express, literal instructions are beyond dispute. Whether Examiners are being instructed to ignore those instructions (via “office policy” or “TC policy” or “Au policy”) is another question altogether and one probably appropriate for the appeals process since the Board is obligated to apply the Rules, Statutes and precedent.

216400 June 5, 2009 at 6:14 am

“Note that the MPEP is not authoritative. It’s one editor’s summary of the law and rules as the editor understands them.”

216400 June 5, 2009 at 6:15 am
mike June 5, 2009 at 12:12 pm

I respectfully disagree with Mr. Ivey’s characterization of the MPEP. It is an official procedure manual of which official notice is properly taken by courts. That alone contradicts the “one editor’s understanding” characterization.

An examiner August 19, 2009 at 9:28 pm

Sorry to tell you but as an examiner I don’t believe the instructions in the MPEP are beyond dispute. If I believe the case law to be in conflict with the MPEP I always go with the case law. Right now that’s particularly applicable to Bilski and 101 since no interm guidelines are out yet, but there are other areas where I reject based on case that and the rejection will contradict parts of the MPEP.

mike August 20, 2009 at 3:56 pm


You raise a good point, which is the exception that proves the rule.

Frank October 17, 2009 at 10:45 am

I agree that Examiner makes a good point with respect to changes in case law. With respect to proper examining PROCEDURE, however, I agree with Mike that the MPEP is definitive.

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